Sunbeam Products, Inc. v. West Bend Co.

• Decision Date: 15 September 1997
• Docket Number: Nos. 96-60413,96-60540,s. 96-60413
• Citation: 123 F.3d 246
• Parties: SUNBEAM PRODUCTS, INC., Plaintiff-Appellee, v. The WEST BEND COMPANY, Defendant-Appellant.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 246

123 F.3d 246

44 U.S.P.Q.2d 1161

SUNBEAM PRODUCTS, INC., Plaintiff-Appellee, v. The WEST BEND COMPANY, Defendant-Appellant.

Nos. 96-60413, 96-60540.

United States Court of Appeals, Fifth Circuit.

Sept. 15, 1997.

Neville Henry Boschert, Ricky Glenn Luke, Watkins, Ludlam & Stennis, Jackson, MS, Michael J. Kline, George P. Faines, Kimberly A. Collins, Thorp, Reed & Armstrong, Pittsburg, PA, for Sunbeam Products, Inc., Plaintiff-Appellee.

Peter N. Jansson, John E. Munger, Elisabeth T. Bridge, Jansson & Shupe, Racine, WI, Frank D. Montague, Jr., Montague, Pittman & Varnado, Hattiesburg, MS, for The West Bend Co., Defendant-Appellant.

Appeals from the United States District Court for the Southern District of Mississippi.

Before JOLLY, SMITH and DENNIS, Circuit Judges.

JERRY E. SMITH, Circuit Judge:

The West Bend Company challenges a preliminary injunction entered pursuant to the Lanham Act, 15 U.S.C. § 1125(a). Finding no reversible error, we affirm.

I.

Sunbeam Products, Inc. ("Sunbeam"), sued The West Bend Company ("West Bend"), requesting injunctive relief to bar West Bend from manufacturing and marketing a stand mixer, Model No. 41012 ("West Bend Mixer # 1"). The complaint alleged that West Bend Mixer # 1 unlawfully replicated the product configuration of a stand mixer made by Sunbeam, the "American Classic Mixmaster TM," Model No. 2360.

Sunbeam alleged that the manufacture and sale of West Bend Mixer # 1 violated the Lanham Act, 15 U.S.C. § 1125(a); the Federal Trademark Dilution Act of 1995, 15 U.S.C. § 1125(c); and the common law of unfair competition, trade dress infringement, dilution, and false and misleading advertising. To demonstrate that West Bend had unlawfully replicated its product configuration, Sunbeam identified six "key design features" in the American Classic Mixmaster TM that, when taken in combination, allegedly distinguish the Sunbeam mixer from all other commercially available stand mixers:

(1) a distinctive "torpedo-shaped" housing configuration with a rounded rear-mounted speed control dial that conforms to the shape of the housing;

(2) a distinctive handle attached to the front of the housing that arches over the housing and terminates in the space above the housing;

(3) a distinctive beater-eject button located on the left side of the housing beneath the handle;

(4) a distinctive "tear-drop shaped" face plate on the front of the housing;

(5) a distinctive horizontal stripe or groove along the side of the housing; and

(6) a distinctive combination of black and white features.

The district court granted a temporary restraining order ("TRO") on April 12, 1996 enjoining West Bend from marketing any products embodying the Mixmaster TM product design trademark or similar designs or using any other mark or device likely to dilute the distinctive quality of the Mixmaster TM product design and the Sunbeam trademark. In particular, the court enjoined West Bend from marketing West Bend Mixer # 1, or displaying it at a pending Gourmet Show in San Francisco on May 4-8, 1996. West Bend filed a motion to quash the TRO, leading the court to dissolve it on April 16, 1996. Nevertheless, the court set a hearing for April 30 to consider the motion for preliminary injunction.

Following the hearing, the court granted Sunbeam's request for a preliminary injunction on May 3, 1996, reinstating the injunction against West Bend Mixer # 1. The preliminary injunction substantially reinstated the terms of the TRO.

West Bend filed an emergency motion to clarify the injunction, proposing an alternative design for the mixer ("West Bend Mixer # 2"). On May 6, the court ruled that West Bend Mixer # 2 also violated the Sunbeam trademark and was likewise prohibited by the preliminary injunction, but the court suggested that West Bend could escape the injunction by modifying the speed control dial. ¹ The court modified the terms of the preliminary injunction to reflect this ruling on May 14.

West Bend redesigned the stand mixer in an effort to comply, and the new design ("West Bend Mixer # 3") was presented to the court on May 13-14. On May 14, the court further modified the terms of the preliminary injunction to bar West Bend Mixer # 3. The court approved a design incorporating additional modifications, which subsequently was marketed by West Bend ("West Bend Mixer # 4"). The most prominent difference between West Bend Mixer # 3 and # 4 was the elimination of mixing speed terms from the speed control dial (e.g., "mix," "beat," "stir," and "blend").

Finally, on May 23, the court entered an order and findings summarizing the scope of the preliminary injunction. West Bend filed a notice of appeal from the preliminary injunction, the two orders modifying it, and the final order and findings.

On July 31, 1996, West Bend submitted to the district court its design for the next generation of mixers ("West Bend Mixer # 5"). On August 6, the court ruled that West Bend Mixer # 5 was prohibited by the preliminary injunction, but approved a design that incorporated the nondescript speed control dial of Mixer # 4 ("West Bend Mixer # 6").

On August 12, West Bend filed a notice of appeal from the August 6 order, and the cases were consolidated. We have jurisdiction over these cases under 28 U.S.C. § 1292(a)(1), which authorizes interlocutory appeal from preliminary injunctions.

II.

A preliminary injunction is an extraordinary equitable remedy that may be granted only if the plaintiff establishes four elements: (1) a substantial likelihood of success on the merits; (2) a substantial threat that the movant will suffer irreparable injury if the injunction is denied; (3) that the threatened injury outweighs any damage that the injunction might cause the defendant; and (4) that the injunction will not disserve the public interest. See Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1256 (5th Cir.1989). These four elements are mixed questions of law and fact. Accordingly, we review the factual findings of the district court only for clear error, but we review its legal conclusions de novo. Likewise, although the ultimate decision whether to grant or deny a preliminary injunction is reviewed only for abuse of discretion, a decision based on erroneous legal principles is reviewed de novo. Id. ²

III.

The Lanham Act, 15 U.S.C. § 1125(a), creates a cause of action for trade dress infringement, analogous to the common law cause of action for unfair competition. "Trade dress" refers to the total image and overall appearance of a product. Blue Bell, 864 F.2d at 1256. ³ The protection of trade dress is tantamount to trademark protection:

Protection of trade dress, no less than of trademarks, serves the Act's purpose to "secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers. National protection of trademarks is desirable, Congress concluded, because trademarks foster competition and the maintenance of quality by securing to the producer the benefits of a good reputation."

Two Pesos, 505 U.S. at 774, 112 S.Ct. at 2760 (citations omitted). ⁴

To demonstrate an unlawful trade dress infringement, the plaintiff must first establish that the trade dress qualifies for trade dress protection. This inquiry encompasses three issues: (1) distinctiveness, (2) secondary meaning, and (3) functionality. ⁵ If the court concludes that the trade dress is protected, the plaintiff must demonstrate that it has been infringed. "Infringement occurs only when there is a likelihood of confusion between the products of the plaintiff and the defendant." Blue Bell, 864 F.2d at 1256; accord Taco Cabana, 932 F.2d at 1118-19.

To establish that the product configuration of the American Classic Mixmaster TM merits trademark protection, therefore, Sunbeam must demonstrate that the product configuration is either inherently distinctive or has acquired a secondary meaning, and that this distinctive product configuration is not functional. If a trade dress is functional, it does not merit protection, even if it is inherently distinctive or has acquired secondary meaning. Two Pesos, 505 U.S. at 775, 112 S.Ct. at 2760-61. ⁶ If the product configuration of the American Classic Mixmaster TM warrants trade dress protection, Sunbeam also must demonstrate a likelihood of confusion, in order to prevail on its claim of trade dress infringement under the Lanham Act.

A.

As a threshold matter, we must determine whether the product configuration of the American Classic Mixmaster TM merits protection, either because the product configuration is inherently distinctive or because it has acquired a secondary meaning. We now examine these various considerations.

1.

For purposes of trademark law, marks or product features traditionally have been arranged into five categories: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. Two Pesos, 505 U.S. at 768, 112 S.Ct. at 2757. ⁷ This hierarchy determines the degree of trademark protection to which a given mark is entitled. The latter three categories are considered inherently distinctive, "because their intrinsic nature serves to identify a particular source of a product." Id.

In contrast, marks that are merely descriptive of a product are not considered inherently distinctive, "because they do not inherently identify a particular source." Id. at 769, 112 S.Ct. at 2757. Accordingly, descriptive marks are entitled to protection only if they have come to be uniquely associated with a particular source, thereby acquiring a "secondary meaning." Id. at 766 n. 4, 112 S.Ct. at 2756 n. 4. Finally, generic marks are not protected under any circumstances, because they refer not to a particular product or manufacturer, but solely to "the genus of which the particular product is a species." Id. at 768, 112 S.Ct. at 2757 (quoting Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658,...