Graham Webb Intern. v. Helene Curtis Inc., Civil No. 98-603 (DSD/JMM).

• Decision Date: 09 June 1998
• Docket Number: Civil No. 98-603 (DSD/JMM).
• Citation: 17 F.Supp.2d 919
• Parties: GRAHAM WEBB INTERNATIONAL, Plaintiff, v. HELENE CURTIS INCORPORATED, Defendant. HELENE CURTIS INCORPORATED, and Conopco Incorporated, Counterclaim Plaintiffs, v. GRAHAM WEBB INTERNATIONAL, Counterclaim Defendant.
• Court: U.S. District Court — District of Minnesota

17 F.Supp.2d 919

GRAHAM WEBB INTERNATIONAL, Plaintiff, v. HELENE CURTIS INCORPORATED, Defendant.

HELENE CURTIS INCORPORATED, and Conopco Incorporated, Counterclaim Plaintiffs, v. GRAHAM WEBB INTERNATIONAL, Counterclaim Defendant.

Civil No. 98-603 (DSD/JMM).

United States District Court, D. Minnesota.

June 9, 1998.

COPYRIGHT MATERIAL OMITTED

Alan G. Carlson, Scott W. Johnston and Merchant & Gould, Minneapolis, MN, for Plaintiff.

Alain M. Baudry and Maslon, Edelman, Borman & Brand, Minneapolis, MN, Berj A. Terzian, Peter D. Vogl, Kelly D. Talcott, Maria S. Kratzer and Pennie & Edmonds, New York City, for Defendant.

ORDER

DOTY, District Judge.

This matter is before the court on the motion of plaintiff Graham Webb International for a preliminary injunction. Based on a review of the file, record, and proceedings herein, the court denies plaintiff's motion.

BACKGROUND

Plaintiff Graham Webb International is a Minnesota Limited Partnership with its principal place of business in Edina, Minnesota. Defendant Helene Curtis is an Illinois corporation with its principal place of business in Illinois. Counterclaim plaintiff Conopco Incorporated is a New York corporation with its principal place of business in Connecticut. Conopco does business under a number of trade names, including Chesebrough-Pond's USA Company and Helene Curtis,¹ and is itself owned by Unilever United States. See Declaration of Kenneth C. Leonard (Docket No. 16) at ¶ 1. The court's jurisdiction is based on 28 U.S.C. §§ 1331, 1332, and 1338, as well as a number of other statutory provisions.

Plaintiff manufactures and sells premium hair care products such as shampoos, conditioners, and styling tools. See Declaration of Rick Kornbluth (Docket No. 13) at ¶ 2. In 1989, plaintiff developed a new line of specialty hair care products, called "Intensives," which use heat-activated conditioning and moisturizing agents to treat and restore damaged hair. Id. at ¶ 3. Plaintiff alleges that in 1994, it coined the term "ThermaSilk" to be used in connection with some of the products in the "Intensives" line. Id. at ¶ 4. Products containing the "ThermaSilk Complex."² were first shipped by plaintiff to salons and other "professional" hair care outlets in June of 1995. Id. at ¶¶ 5, 9.

Defendants allege that the term "ThermaSilk" was independently created at Chesebrough³ in the early Fall of 1994, approximately ten months before plaintiff began listing "ThermaSilk Complex" as an ingredient in some of its "Intensives" products. See Declaration of Kimberly A. Doyle (Docket No. 19) at ¶¶ 3-6 (detailing development of name through use of focus groups). Chesebrough began extensive testing of this name and associated products in October 1994. Declaration of Gwendolyn Jarrett (Docket No. 21) at ¶¶ 3-5. Such testing, including focus groups, in-home trials, and advertising concept studies, continued for the remainder of 1994 and throughout 1995.⁴ See Id. at ¶ 5; Declaration of Jacqueline Jodl (Docket No. 22) at ¶¶ 9-13; Declaration of Lori Gertzog (Docket No. 20) at ¶¶ 5-6. Chesebrough sales representatives visited major retail accounts such as Target, K-Mart, and Walgreen's to inform them of the new "ThermaSilk" line. Declaration of Jay Contessa (Docket No. 18) at ¶¶ 3-4. As these efforts predate plaintiff's use of "ThermaSilk" on any of its products, defendants contend that they were the first to use "ThermaSilk" as a trademark for consumer hair products.⁵ Plaintiff responds that the focus groups, other product testing, and disclosures to retailers were all conducted pursuant to secrecy agreements, thus negating any inference that defendants were first to openly and notoriously use the "ThermaSilk" mark.

Defendants allege that they conducted due diligence in clearing the "ThermaSilk" mark before using it on any of their products. A trademark search conducted to determine the availability of "ThermaSilk" as a trademark for use with the new hair care products indicated that "ThermaSilk" had been registered as a trademark for silk clothing by Terramar Sports Worldwide (hereafter "Terramar") and that a similar trademark "ThermaSil" had been registered by the Grayson O Company (hereafter "Grayson") for hair care products. Declaration of Kenneth Leonard (Docket No. 16) at ¶ 5. Chesebrough engaged Frank Kelly of the Kelly Pioneer Group to clear Chesebrough's use and registration of "ThermaSilk." Kelly negotiated a consent agreement between Chesebrough and Terramar that permitted "ThermaSilk" to co-exist as the trademark for both companies' products. Declaration of Frank Kelly (Docket No. 24) at ¶ 15. Through Kelly's efforts, Grayson also assigned all of the rights it held in the trademarks "ThermaSil," "ThermaSil-Plus," and "ThermaSilk"⁶ to Kelly's firm, which in turn assigned them to Chesebrough. Chesebrough then filed applications to register "ThermaSilk" as a trademark for its new hair care products.

Plaintiff alleges that in 1995 Wally Gerhardt from Grayson contacted Gene Martignetti, plaintiff's Vice President and General Manager, and told him that Grayson had a trademark in the term "ThermaSil" for hair care products. Declaration of Gene Martignetti (Docket No. 14) at ¶ 3. This contact was allegedly precipitated by Grayson's President, Van Stamey, seeing plaintiff's products bearing the designation "ThermaSilk" at a trade show in August 1995. Declaration of Van Stamey (Docket No. 23) at ¶ 3. Martignetti avers that he believed that Gerhardt was alleging trademark infringement as leverage to secure for Grayson an exclusive manufacturing and packaging deal for plaintiff's products. Declaration of Gene Martignetti (Docket No. 14) at ¶ 4. Martignetti refused to deal with Grayson, allegedly informing Grayson of his belief that no infringement existed due to the distinct nature of the marks. Plaintiff continued to promote and sell products containing the "ThermaSilk Complex" with no further objections from Grayson. Id. at ¶¶ 5-6.

Martignetti later received a call from Kelly, who told Martignetti that his company had acquired the "ThermaSil" mark from Grayson and intended to sell hair care products under the mark.⁷ Id. at ¶¶ 7, 9. Martignetti avers that Kelly told him of his concern that plaintiff's "ThermaSilk" designation infringed his company's "ThermaSil" mark. Id. at ¶ 10. Martignetti believed that Kelly was using a charge of infringement to try to induce plaintiff to sell the "ThermaSilk" mark; however, since plaintiff intended to continue using the "ThermaSilk" mark Martignetti did not return Kelly's phone calls. Id. at 11-13; Declaration of Frank Kelly (Docket No. 24) at ¶ 8. On February 6, 1996, Martignetti received a letter from Kelly, indicating that: (1) Kelly's principal had acquired the trademarks "ThermaSilk" and "ThermaSil" from Grayson; (2) his principal intended to use "ThermaSilk" as the product name for hair care products to be sold primarily in retail stores; and (3) Martignetti had indicated that since plaintiff's products were sold to salons only and plaintiff used "ThermaSilk" only as a "secondary type term," the products could co-exist. Letter from Frank Kelly to Gene Martignetti, Exhibit 9 to Declaration of Gene Martignetti (Docket No. 14). Although Martignetti alleges there were errors in the letter, he did not respond. Declaration of Gene Martignetti (Docket No. 14) at ¶ 14. Chesebrough contends that with the assignment from Grayson to Chesebrough, the agreement with Terramar, and the coexistence agreement with plaintiff,⁸ "ThermaSilk" was cleared for use and registration. Chesebrough thereafter registered the "ThermaSilk" trademark, and plaintiff did not object to or oppose such registration. Declaration of Kenneth Leonard (Docket No. 16) at ¶ 11. The United States Patent and Trademark Office on April 8, 1998, notified Chesebrough that the "ThermaSilk" mark had been approved for registration.

Plaintiff alleges that in late 1997, its President, Rick Kornbluth, observed an article in Brandweek magazine detailing Unilever's plans to introduce a new line of heat-activated hair care products under the name "ThermaSilk." Declaration of Rick Kornbluth (Docket No. 13) at ¶ 13. Like plaintiff's products, defendants' products were to use special ingredients that were activated by the heat of blow dryers, curling items, and other like devices. The article indicated that Unilever was putting some $82 million behind the introduction and that the products were to be shipped to retailers in February of 1998 with advertising to begin the next month. See "Unilever Turns up the Heat," Exhibit 6 to Declaration of Rick Kornbluth (Docket No. 13). Plaintiff alleges that it was concerned about the likelihood of consumer confusion because "ThermaSilk" was being used on both companies' products and both used heat-activated ingredients. Declaration of Rick Kornbluth (Docket No. 13) at ¶ 14.

Plaintiff filed this action on February 4, 1998, alleging trademark infringement and related claims against defendant Helene Curtis. A copy of the complaint was sent to Helene Curtis the same day accompanied by a letter requesting that Helene Curtis cease and desist any use of the "ThermaSilk" designation. Letter from Alan Carlson to Ronald Gidwitz, Exhibit 8 to Declaration of Rick Kornbluth (Docket No. 13). Plaintiff also informed Helene Curtis that it intended to seek a temporary restraining order but would wait until February 9, 1998, to begin the preparation of its papers. Id. Plaintiff did not seek a temporary restraining order, but instead filed this motion for a preliminary injunction on May 6, 1998.

DISCUSSION

The court considers four factors in determining whether to grant a plaintiff's motion for preliminary injunction:

1. Is there a substantial threat that the movant will suffer irreparable harm if relief is not granted;

2. Does the irreparable harm to movant outweigh any potential harm that granting a preliminary injunction may cause the non-moving parties;

3....