37 F.3d 74 (2nd Cir. 1994), 1979, Polymer Technology Corp. v. Mimran

Docket Nº:1979, Docket 94-7207.
Citation:37 F.3d 74
Party Name:32 U.S.P.Q.2d 1506 POLYMER TECHNOLOGY CORPORATION (a New York Corporation), Plaintiff-Appellant, v. Emile MIMRAN, also known as Alan Franco; U.D.S. Export & Import, also known as User Designed Software; Optic Express, Incorporated; American Contact Lens Association; International Contact Lens Lab I; Marty Powers Sales, Incorporated; Worldwide Scent
Case Date:October 06, 1994
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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37 F.3d 74 (2nd Cir. 1994)

32 U.S.P.Q.2d 1506




Emile MIMRAN, also known as Alan Franco; U.D.S. Export &

Import, also known as User Designed Software; Optic

Express, Incorporated; American Contact Lens Association;

International Contact Lens Lab I; Marty Powers Sales,

Incorporated; Worldwide Scents, Incorporated; Julio

Moreno; Carlo Sanchez d/b/a Alpha Omega; and Various John

Does, Jane Does and XYZ Companies, Defendants-Appellees.

No. 1979, Docket 94-7207.

United States Court of Appeals, Second Circuit

October 6, 1994

Argued May 23, 1994.

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[Copyrighted Material Omitted]

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Morton M. Maneker, New York City (Proskauer Rose Goetz & Mendelsohn, New York City, of counsel), for plaintiff-appellant.

Fran M. Jacobs, New York City (Jonathan A. Kenter, Richards & O'Neill, New York City, of counsel), for defendants-appellees.


ALTIMARI, Circuit Judge:

This action for a preliminary injunction returns to us after a prior remand to the district court. See Polymer Technology Corp. v. Mimran, 975 F.2d 58 (2d Cir.1992) ("Polymer I "). In 1991, plaintiff-appellant Polymer Technology Corporation ("Polymer") commenced an action against defendant-appellee Emile Mimran and other defendants alleging various claims of trademark infringement and counterfeiting. The claims were based on the defendants' retail sales of a promotional product manufactured by Polymer that Polymer claimed was intended for professional distribution only. All defendants other than Mimran stipulated to a preliminary injunction. The district court denied the injunction against Mimran, finding insufficient evidence of counterfeiting or trademark infringement. On appeal, we remanded for further findings regarding certain of Polymer's claims. For the reasons discussed below, we now affirm the district court's denial of the preliminary injunction, 841 F.Supp. 523.

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Polymer, a manufacturer of ophthalmic products including contact lens solutions, sells its lens care solutions under the federally-registered "BOSTON" trademark. Polymer uses two methods of distributing these solutions. One line of solutions is distributed in the retail market ("retail solutions"). The retail solutions are generally packaged individually and their outer packaging contains a list of active ingredients and preservatives, a notice that the contents are sterile, warnings concerning contamination, contraindications, and shelf life, and tamper-evident seals on the top and bottom flaps. The solutions also contain an insert with directions and important safety information.

The other line of solutions is directed through authorized distributors to professional eye-care practitioners ("professional solutions"). Although the professional solutions contain an insert similar to the one used with the retail solutions, they do not always contain the same information on their outer packaging as the retail solutions, nor do they always contain the tamper-evident seal. Some of the solutions contain labels indicating that the solutions are "For Professional Dispensing Only."

The professional solutions are packaged in two types of kits, "Care System Kits" and "Starter Kits." The "Care System Kits" contain a full retail-size bottle of conditioning solution, and smaller containers of lens cleaner and reconditioning drops. Polymer sells these Care System Kits to the distributors for $1.75, and they in turn sell them to eye-care professionals for between $2.00 and $2.50. The price for the retail equivalent of the "Care System Kits" ranges from $10.00 to $14.50. The "Starter Kits" contain sample-sized containers of the solutions and are given to the distributors free of charge.

Although Polymer's authorized distributors are not explicitly contractually bound to restrict their distribution of the professional solutions to eye-care practitioners, the distribution of the professional solutions to these practitioners is a key part of Polymer's marketing strategy. Presumably the eye-care practitioners give the solutions to their patients as they fit them for contact lenses, and the patients then continue to use the BOSTON solutions in the future. Polymer's marketing research indicates that 75-80% of patients will continue to buy the same brand of solution recommended to them by their doctors.

Defendant-appellant Emile Mimran owns a number of businesses that distribute ophthalmic lens care products. Mimran admittedly obtains Polymer's professional solutions from Polymer's authorized distributors and then resells them to wholesalers and retail drug stores. Polymer sought a preliminary injunction against Mimran from obtaining possession of, purchasing, or selling Polymer's professional solutions. The district court for the Southern District of New York (Knapp, J.) denied the injunction against Mimran, finding, among other things, that Polymer's failure to have restricted by contract "the population of entities to which defendants could sell its product" defeated Polymer's claim that the sales in question were unauthorized. On appeal, a divided panel of this Court vacated the district court's decision and remanded for reconsideration of certain evidence relevant to Polymer's claims of trademark infringement. See Polymer I, 975 F.2d at 61. Polymer then made a renewed motion for a preliminary injunction based upon the trademark theories previously advanced as well as several new theories. On remand, the district court reconsidered the evidence, considered Polymer's new theories, and again denied the motion.

Polymer now appeals.


On appeal, Polymer maintains that Mimran's retail sale of products Polymer intended only for professional distribution constitutes trademark infringement and common law misappropriation. We will discuss each of Polymer's theories of liability in turn.

I. Standard of Review

As a general matter, in order for Polymer to obtain a preliminary injunction, it must demonstrate irreparable harm, and "either (1) a likelihood of success on the merits of its case or (2) sufficiently serious questions

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going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in its favor." Coca-Cola Co. v. Tropicana Prods., Inc., 690 F.2d 312, 314-15 (2d Cir.1982) (citations omitted). A decision to grant or deny a preliminary injunction is committed to the discretion of the district court. See id. at 315.

II. Trademark Infringement Claims

As it did below, Polymer sets forth the following three theories of trademark infringement by Mimran: quality control violations, unauthorized distribution, and contributory infringement.

(1) Quality Control

An action for trademark infringement arises where "[a]ny person ... without the consent of the registrant ... use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods ... [and] such use is likely to cause confusion...." Section 32(1) of the Lanham Act, 15 U.S.C. Sec. 1114(1). An action will not arise where the goods being sold are genuine goods bearing a true mark. See Polymer I, 975 F.2d at 61 (citation omitted). Goods, however, that do not meet the trademark owner's quality control standards will not be considered genuine goods, and their sale will constitute trademark infringement. See, e.g., El Greco Leather Prods. Co. v. Shoe World, Inc., 806 F.2d 392, 395-96 (2d Cir.1986) (finding trademark infringement where defendants sold plaintiff's shoes even though the shoes had not been inspected by plaintiff, where inspection was integral part of plaintiff's quality control effort); Shell Oil Co. v. Commercial Petroleum, Inc., 928 F.2d 104, 107 (4th Cir.1991). This is so because "trademark law ... serves to guarantee the quality of the trademarked product," Original Appalachian Artworks, Inc., v. Granada Elecs., Inc., 816 F.2d 68, 75 (2d Cir.1987) (Cardamone, J., concurring), cert. denied, 484 U.S. 847, 108 S.Ct. 143, 98 L.Ed.2d 99 (1987), and the sale of inferior goods with a true mark will clearly undermine the value of the trademarked brand as a guarantor of quality.

Relying on the above case law, Polymer claims that Mimran has violated its trademark rights by selling its professional solutions to the retail market even though the solutions do not meet Polymer's quality control standards for retail product. Specifically, Polymer claims that the kits being sold by Mimran do not meet its quality control standards for retail product because the kits lack ingredients statements, warnings, and anti-tampering seals required by the FDA. Additionally, Polymer claims that Mimran breaks down the kits and sells the solutions individually, without the appropriate individual packaging.

(a) improper labeling

In its initial decision, the district court did not address Polymer's claims that Mimran's distribution of allegedly mislabeled product amounted to trademark infringement. In Polymer I, we directed the court to consider whether these FDA labeling violations occurred and whether such violations can constitute trademark infringement. On remand, the district court found that Polymer's claims were belied by the fact that Polymer itself placed a product (the "Combination Pack") into the retail market that did not...

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