Nabisco, Inc. v. Warner-Lambert Co.

• Decision Date: 01 August 1999
• Docket Number: WARNER-LAMBERT,Docket No. 99-7191
• Citation: 220 F.3d 43
• Parties: (2nd Cir. 2000) NABISCO, INC. and NABISCO BRANDS COMPANY, Plaintiffs-Counter-Defendants- Appellants, v.COMPANY, Defendant-Counter-Claimant-Appellee
• Court: U.S. Court of Appeals — Second Circuit

Page 43

220 F.3d 43 (2nd Cir. 2000)

NABISCO, INC. and NABISCO BRANDS COMPANY, Plaintiffs-Counter-Defendants- Appellants, v. WARNER-LAMBERT COMPANY, Defendant-Counter-Claimant-Appellee.

Docket No. 99-7191

August Term, 1999

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

(Argued: November 9, 1999)

(Decided: June 05, 2000)

Appeal from an order by the United States District Court for the Southern District of New York (Constance Baker Motley, Judge), granting summary judgment to defendant on plaintiffs' trademark infringement and unfair competition claims. We affirm on the ground that there is as a matter of law no likelihood of confusion as to the source of the parties' ICE BREAKERS and DENTYNE ICE chewing gums.

JAMES B. SWIRE, Dorsey & Whitney LLP (Bruce R. Ewing, of counsel), New York, New York, for Plaintiffs-Counter-Defendants-Appellants.

EDWARD E. VASSALLO, Fitzpatrick, Cella, Harper & Scinto (Nina Shreve, Timothy J. Kelly, Dolores Moro-Grossman, Bonny B. Rozzo, Fitzpatrick, Cella, Harper & Scinto; John N. O'Shea, Belinda I. Berman, of counsel), New York, New York, for Defendant-Counter-Claimant-Appellee.

Before: WINTER, Chief Judge, CARDAMONE, and STRAUB, Circuit Judges.

WINTER, Chief Judge:

Nabisco, Inc. and Nabisco Brands Company (collectively, "Nabisco") appeal from Judge Motley's order granting summary judgment to Warner-Lambert Co. on Nabisco's trademark infringement and unfair competition claims arising out of the marketing of competing, breath-freshening chewing gums. See Nabisco v. Warner-Lambert Co., 32 F. Supp. 2d 690 (S.D.N.Y. 1999). Nabisco claims that Warner-Lambert's use of the mark DENTYNE ICE infringes Nabisco's rights in ICE BREAKERS. We affirm on the ground that there is no genuine issue of material fact as to whether consumers are likely to confuse the source of the parties' respective chewing gums.

BACKGROUND

The background is more fully set forth in the district court's opinion, see id. at 692-694, with which we assume familiarity. We summarize here only those undisputed facts pertinent to our disposition.

Nabisco has sold a breath-freshening chewing gum under the federally registered trademark ICE BREAKERS since December 1995. ICE BREAKERS gum is sold as a traditional, mint-flavored stick in a metallic-blue, holographic, brick-shaped package featuring the stylized mark ICE BREAKERS in white, upper-case letters on the front and back panels.

Warner-Lambert first offered DENTYNE ICE for sale in Canada as an extension of its well-known line of DENTYNE brand chewing gum. In March 1997, Warner-Lambert launched the nationwide sale of DENTYNE ICE in the United States. The gum is sold in three flavors--peppermint, spearmint, and cinnamon -- each as a candy-coated pellet in packages of twelve contained in foil-sealed, clear plastic with a cardboard overlap. Both the DENTYNE and the ICE components of Warner-Lambert's mark are prominently displayed across the package's front panel. "Dentyne" appears across the top-third; and "Ice," in stylized lettering, appears across the middle third and on the foil wrap around each coated pellet.

We reproduce below to-scale copies of the front panels of the respective packages of the parties' products [Tabular or Graphical Material Omitted]

In June 1996, Warner-Lambert filed an intent-to-use application for federal registration of DENTYNE ICE in the United States Patent and Trademark Office ("PTO"). Nabisco opposed that application in the PTO and thereafter filed a complaint against Warner-Lambert in the Southern District of New York. The PTO proceedings have been stayed pending resolution of the present matter.

Nabisco's complaint claimed: (i) infringement of a registered trademark, in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); (ii) false designation of origin, in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1); and (iii) trademark infringement and unfair competition in violation of New York common law. Warner-Lambert's answer denied Nabisco's material allegations and asserted counterclaims for appropriate declaratory relief. Later, Warner-Lambert filed the instant motion for summary judgment on Nabisco's claims. The district court initially denied the motion but then sua sponte reconsidered that denial and granted the motion. See Nabisco, 32 F. Supp. 2d at 694. Final judgment disposing of Nabisco's claims and Warner-Lambert's counterclaims was thereafter entered, and this appeal followed.

DISCUSSION

We review the grant of summary judgment de novo. See Ginsberg v. Healey Car & Truck Leasing, Inc., 189 F.3d 268, 270 (2d Cir. 1999). Summary judgment is appropriate when, after reviewing the evidence in the light most favorable to the non moving party, there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Tops Mkts., Inc. v. Quality Mkts., Inc., 142 F.3d 90, 95 (2d Cir. 1998). A dispute is not "genuine" unless "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

To prevail on its trademark infringement and unfair competition claims, Nabisco must prove that ICE BREAKERS is a protectable trademark and that Warner-Lambert's use of DENTYNE ICE is likely to confuse consumers as to the source or sponsorship of Nabisco's ICE BREAKERS product. See Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 960 (2d Cir. 1996); Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1048 (2d Cir. 1992). The parties agree, and, given our disposition of the matter, we may assume without deciding, that ICE BREAKERS is suggestive when used in connection with chewing gum and is therefore protectable as a trademark without proof that consumers associate it with Nabisco's product. See Lane Capital Management, Inc. v. Lane Capital Management, Inc., 192 F.3d 337, 344 (2d Cir. 1999) ("[S]uggestive marks are deemed inherently distinctive. Their intrinsic nature serves to identify a particular source of a product, so they will be automatically protected."). However, a reasonable trier could not find for Nabisco on the likelihood of confusion element.

In addressing likelihood of confusion, we apply the eight factors set forth by Judge Friendly in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961):

(i) the strength of plaintiff's mark;

(ii) the similarity of the parties' marks;

(iii) the proximity of the parties' products in the marketplace;

(iv) the likelihood that the plaintiff will bridge the gap between the products;

(v) actual confusion;

(vi) the defendant's intent in adopting its mark;

(vii) the quality of the defendant's product; and

(viii)the sophistication of the relevant consumer group.

See also Estee Lauder Inc. v. Gap, Inc., 108 F.3d 1503, 1510 (2d Cir. 1997). The predicate facts are reviewed on a clearly erroneous standard. The facts here are undisputed, however, and the issue is whether, on balance, the factors establish a likelihood of confusion. That is a question of law. See Bristol-Myers Squibb Co., 973 F.2d at 1043.

Although we generally do not treat any one Polaroid factor as dispositive in the likelihood of confusion inquiry, see Morningside Group Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 139 (2d Cir. 1999); Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 965-67 (2d Cir. 1981), we have often stated that "the evaluation of the Polaroid factors is not a mechanical process where the party with the greatest number of factors weighing in its favor wins. Rather, a court should focus on the ultimate question of whether consumers are likely to be confused," Paddington Corp. v. Attiki Importers & Distribs., Inc., 996 F.2d 577, 584 (2d Cir. 1993) (internal quotation marks and citation omitted). Accordingly, in an appropriate case, the "similarity of the marks" factor can be dispositive and will warrant summary judgment for an infringement defendant "if the court is satisfied that the . . . marks are so dissimilar that no question of fact is presented." See Resource Developers, Inc. v. Statue of Liberty-Ellis Island Found., Inc., 926 F.2d 134, 141 (2d Cir. 1991) (quoting Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 116 (2d Cir. 1984)).

We therefore begin with an analysis of the marks themselves. DENTYNE ICE and ICE BREAKERS are at best marginally similar because of the common use of "Ice." Of course, the varying placement of "Ice" is a major difference. More critically, Warner-Lambert prominently -- indeed primarily -- identifies DENTYNE ICE as a member of the DENTYNE family of gums, a brand that Nabisco concedes is widely recognized by the consuming public. Warner-Lambert's prominent use of its well-known house brand therefore significantly reduces, if not altogether eliminates, the likelihood that consumers will be confused as to the source of the parties' products. See W.W.W. Pharm. Co v. Gillette Co., 984 F.2d 567, 573 (2d Cir. 1993) (RIGHT GUARD SPORT STICK not confusingly...