14 F.3d 311 (7th Cir. 1994), 93-1700, Storck USA, L.P. v. Farley Candy Co.

Docket Nº:93-1700.
Citation:14 F.3d 311
Party Name:29 U.S.P.Q.2d 1431 STORCK USA, L.P. and August Storck K.G., Plaintiffs-Appellants, v. FARLEY CANDY COMPANY, Defendant-Appellee.
Case Date:January 14, 1994
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit

Page 311

14 F.3d 311 (7th Cir. 1994)

29 U.S.P.Q.2d 1431

STORCK USA, L.P. and August Storck K.G., Plaintiffs-Appellants,


FARLEY CANDY COMPANY, Defendant-Appellee.

No. 93-1700.

United States Court of Appeals, Seventh Circuit

January 14, 1994

Argued Oct. 27, 1993.

Larry L. Saret, John T. Gabrielides, Joseph F. Schmidt (argued), Louis Altman, Diana Flynn, Laff, Whitesel, Conte & Saret, Chicago, IL, for plaintiffs-appellants.

Ann Marie Burke, Chicago, IL, David C. Brezina, Thomas E. Smith, James R. Sweeney (argued), Damian Wasserbauer, Lee, Mann, Smith, McWilliams & Sweeney, Chicago, IL, for defendant-appellee.

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Before CUMMINGS and ROVNER, Circuit Judges, and GRANT, District Judge. [*]

CUMMINGS, Circuit Judge.

In this trade dress infringement case plaintiffs Storck USA, L.P. and August Storck K.G. (referred to jointly as "Storck" or "plaintiff") brought suit against defendant Farley Candy Company ("Farley") alleging, among other things, false designation of origin and unfair competition. Storck has already received two injunctions preliminarily enjoining Farley from utilizing certain elements of Storck's trade dress during the pendency of the suit. Plaintiff objected in the district court to defendant's most recent modification of its trade dress and sought a third preliminary injunction, which was denied. This interlocutory appeal followed. The Court has jurisdiction pursuant to 28 U.S.C. Sec. 1292(a)(1).


Storck, which manufactures, distributes and sells candy throughout the United States, brought suit against Farley, a competitor candy manufacturer, for trade dress infringement pursuant to 15 U.S.C. Sec. 1125(a). At issue is the district court's refusal to issue a third preliminary injunction against Farley to protect the trade dress of Storck's "Werther's Original" butter toffee candy until a final judgment on the merits may be had.

In 1980 plaintiff introduced its "Werther's Original" candy into interstate commerce. In 1988 plaintiff modified the Werther's Original packaging and began to advertise the candy aggressively, emphasizing the package's trade dress in the advertisements. The campaign was successful and Storck's sales of Werther's Original candy increased from $3.6 million in 1988 to over $105 million in 1992. Plaintiff describes the current trade dress of Werther's Original as follows (Br. 5-6):

[The package has] a blond background color ..., a Village Design which is oval in shape and is positioned in the left center portion of the package with two pitchers pouring cream into a merged stream, a mound of unwrapped candy pieces extending across the bottom half of the package, the trademark WERTHER'S ORIGINAL positioned in the center and right upper portion of the package with the phrase "the classic candy made with real butter and fresh cream" appearing below it. The mound on the front of the package continues around the back of the package, which contains a clear window displaying the individual pieces of candy wrapped in gold foil.

[The gold foil wrapper around the individual pieces of candy is printed with] [t]he mark WERTHER'S and the design of a pitcher and flowers ... in cream letters.... Storck's television commercial includes a close-up of the wrapper, and one frame of the commercial's story board features a twinkling wrapper to emphasize the gold color.

The "Village Design" to which plaintiff alludes consists of "two brown and orange pitchers pouring their white liquid contents into a merged stream. In the background ... is a 'pastoral' image of a blue sky, green grass, flowers, a mountain range, and an Alpine village." Storck USA, L.P. v. Farley Candy Co., Inc., 785 F.Supp. 730, 732 (N.D.Ill.1992) ("Storck I ").

In 1990 Farley decided to introduce a butter toffee candy of its own. Part of its product development involved designing a package for the new candy. Storck introduced evidence suggesting that Farley intentionally copied elements of Storck's Werther's Original trade dress in designing the package for its own toffee candy. By January 1992 Farley was ready to begin shipping the new candy, but Storck filed suit and obtained a temporary restraining order preventing Farley from shipping its toffee candy in that package. The district court described Farley's first package as follows:

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Defendant Farley's [first] package for its butter toffee candy [was] a bag in the same size (7 ounces) and in the same shape (rectangular) as the bag for Storck's Werther's Original butter toffee candy. A design on the left center portion of the front panel of Farley's butter toffee package depict[ed] a...

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