Blue Bell Bio-Medical v. Cin-Bad, Inc.

• Decision Date: 10 February 1989
• Docket Number: No. 88-1710.,88-1710.
• Citation: 864 F.2d 1253
• Parties: BLUE BELL BIO-MEDICAL, Plaintiff-Appellant, v. CIN-BAD, INC., d/b/a CBi Medical, Inc., Robert A. Bishop, II and Ray Melander, Jr., Defendants-Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

864 F.2d 1253

BLUE BELL BIO-MEDICAL, Plaintiff-Appellant, v. CIN-BAD, INC., d/b/a CBi Medical, Inc., Robert A. Bishop, II and Ray Melander, Jr., Defendants-Appellees.

No. 88-1710.

United States Court of Appeals, Fifth Circuit.

February 10, 1989.

Retta A. Miller, Dennis N. Ryan, Gerald C. Conley, Jackson & Miller Law Firm, Dallas, Tex., for plaintiff-appellant.

Charles B. Robinson, Clyde Siebman, Sherman, Tex., for defendants-appellees.

Before KING, WILLIAMS and SMITH, Circuit Judges.

JERRE S. WILLIAMS, Circuit Judge:

Appellant Blue Bell Bio-Medical appeals from the district court's refusal to grant a preliminary injunction in its trade dress infringement and unfair competition claims. We find that the district court applied the proper legal analysis and that its factual findings are not clearly erroneous. The court did not abuse its discretion in denying the preliminary injunction. We therefore affirm.

I. Background

Appellant Blue Bell Bio-Medical (Blue Bell) sells medical carts which are used in hospital anesthesia areas and operating rooms. The carts are "Blue Bell" (regal) blue with an off-white molded plastic top and off-white accessories. Blue Bell medical carts may be customized by adding top rails, side rails, equipment shelves, dividers, and other attachments. Blue Bell's market strategy revolves around the "Blue Bell" name and color.¹

Appellee Robert Bishop is the president and chief executive officer of appellee CBi Medical, Inc. (CBi). Appellee Ray Melander, Jr. is the sales manager and vice president of CBi. Melander became Blue Bell's independent representative in Texas in November, 1984. In June of 1986, Melander joined CBi, and requested that CBi be granted permission to distribute Blue Bell medical carts. CBi became Blue Bell's Texas distributor in September, 1986. Prior to its Blue Bell distributorship, CBi sold medical supplies but did not market a line of medical carts.

In June, 1987, Blue Bell terminated its distributorship agreement with CBi. Blue Bell was not satisfied with CBi's sales figures, and contended that CBi was less than vigorous in marketing Blue Bell's products.

Shortly thereafter, CBi began to develop its own line of medical carts under the name "Top Drawer." Stack-On Products is the manufacturer of CBi's Top Drawer carts. Stack-On purchased Blue Bell Medical carts and used Blue Bell brochures and pricing schemes in the design and development of the CBi cart. Stack-On's president, James Lynn, testified, however, that CBi never singled out Blue Bell's cart to copy. Lynn also testified that he looked at medical carts made by other manufacturers while designing the CBi cart.

CBi specified that it wanted a blue medical cart. According to Lynn, it was Stack-On, the manufacturer, who chose the color regal blue from its regular paint inventory for use on CBi's Top Drawer cart. Thus, the CBi cart is a very similar, if not identical, color to Blue Bell's cart. The CBi Top Drawer cart also has a similar overall color scheme. The top is light gray molded plastic, and the attachments are light gray, white, and off-white. Like the Blue Bell cart, the CBi cart can be customized by adding various accessories.

The CBi cart also has similar dimensions to the Blue Bell medical cart. CBi introduced evidence which suggests, however, that there is not much variation in the size and design of medical carts throughout the entire market.²

Blue Bell argues that the CBi cart is virtually indistinguishable from its own cart. CBi contends that its Top Drawer cart is different from Blue Bell's product in each of the following respects: (1) CBi's cart has a gray plastic top instead of an off-white plastic top; (2) CBi's paint has a dull finish instead of a shiny finish; (3) CBi's cart is a slightly darker shade of blue; (4) CBi's cart has a different finish on the handles; (5) CBi's cart has a smooth back panel instead of a corrugated back panel; and (6) CBi's cart has a conspicious "Top Drawer" label on the top left corner and a separate label on the bottom right depicting the CBi Medical, Inc. logo in conjunction with the Stack-On name.

The record suggests one instance where CBi had attempted to "pass off" its Top Drawer cart as a Blue Bell medical cart. After Blue Bell had terminated CBi's distributorship agreement, appellee Melander contacted the Anesthesia Department at the Children's Medical Center in Dallas. Melander inquired about supplying "more carts" to the hospital. Melander had previously provided Blue Bell medical carts to Children's Medical Center. Ms. Beverly Jones, Melander's contact at Children's Medical Center, testified that Melander never informed Children's that he was no longer a distributor of Blue Bell carts.

Children's decided to purchase additional carts from Melander, and each document for the purchase specified that Blue Bell carts were needed. Melander submitted a proposal for the cart purchase which did not specify that Blue Bell carts would be provided, but did use Blue Bell's catalog numbers to identify the types of carts and accessories to be delivered.

Melander delivered CBi's Top Drawer carts to Children's, again without notification that the carts were not Blue Bell carts. Jones testified that from the back the carts looked identical. When she examined the front, however, she noticed the Top Drawer label and immediately determined that these were not the Blue Bell carts ordered. After field testing, Children's rejected CBi's Top Drawer carts because they concluded that the carts were of inferior quality. Children's then ordered Blue Bell carts from the company that had become Blue Bell's Texas distributor.

On May 23, 1988, Blue Bell filed a complaint in federal district court alleging that CBi violated § 43(a) of the Lanham Act³ and the Texas law of unfair competition. Blue Bell sought to enjoin CBi from marketing a medical cart which is confusingly similar to Blue Bell's cart and to prevent CBi from misleading Blue Bell's customers. At issue on appeal is the district court's refusal to grant a preliminary injunction in favor of Blue Bell. We have jurisdiction pursuant to 28 U.S.C. § 1292(a)(1) (1982).

II. Standard of Review

The denial of a preliminary injunction is left to the discretion of the district court, and will be disturbed only upon an abuse of that discretion. City of Meridian, Mississippi v. Algernon Blair, Inc., 721 F.2d 525, 527 (5th Cir.1983). A denial on the basis of erroneous legal principles, however, is reviewed de novo. Federal Trade Comm'n v. Southwest Sunsites, Inc., 665 F.2d 711, 717 (5th Cir.), cert. denied, 456 U.S. 973, 102 S.Ct. 2236, 72 L.Ed.2d 846 (1982).

A party is entitled to a preliminary injunction only after proving 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 not issued; (3) that the threatened injury to the movant outweighs any damage the injunction might cause the opponent; and (4) that the injunction will not disserve the public interest. Dallas Cowboy Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d 1184, 1187 (5th Cir.1979). These elements are mixed questions of law and fact. In reviewing the actions of the district court for abuse of discretion, we uphold the district court's findings of fact unless clearly erroneous. Fed.R.Civ.P. 52(a); Apple Barrel Productions, Inc. v. Beard, 730 F.2d 384, 386 (5th Cir.1984).

III. The Trade Dress Infringement Claim

The Lanham Act creates a cause of action for trade dress infringement. This action is analogous to the common law tort of unfair competition. Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 700-702 (5th Cir.1981), cert. denied, 457 U.S. 1126, 102 S.Ct. 2947, 73 L.Ed.2d 1342 (1982); Sun-Fun Products, Inc. v. Suntan Research & Development, 656 F.2d 186, 192 (5th Cir. Unit B Sept. 1981). The "trade dress" of a product is essentially its total image and overall appearance. Falcon Rice Mill v. Community Rice Mill, 725 F.2d 336, 337 n. 1. (5th Cir.1984). In general, the Act prohibits a manufacturer from "passing off" his goods or services as those of another maker by virtue of substantial similarity between the products. Chevron, 659 F.2d at 701 (quoting Boston Professional Hockey Ass'n. v. Dallas Cap & Emblem Mfg. Co., 510 F.2d 1004, 1010 (5th Cir.), cert. denied, 423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98 (1975)).

A court must undertake a two-step analysis to resolve a trade dress infringement claim under the Lanham Act. The first question is whether the product's trade dress qualifies for protection. This inquiry encompasses three issues: (1) distinctiveness, (2) secondary meaning, and (3) functionality. Second, if the trade dress is protected, the court must then determine whether the trade dress has been infringed. Infringement occurs only when there is a likelihood of confusion between the products of the plaintiff and the defendant. See Sno-Wizard Mfg. v. Eisemann Products Co., 791 F.2d 423, 425-26 (5th Cir. 1986); Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 425 (5th Cir.1984).

The district court applied this analysis to Blue Bell's trade dress infringement claim. First, the court concluded that Blue Bell had not established that its medical cart was distinctive. The court also determined that Blue Bell had failed to show that its product's features had acquired a secondary meaning. Thus, the court found that Blue Bell's trade dress was not protected under the Act. Alternatively, the court determined that even if the Blue Bell cart was entitled to protection, Blue Bell had failed to prove that there was a likelihood of confusion between the two products. The district court therefore concluded that Blue Bell did not meet its burden of establishing a substantial likelihood of success on the merits, and denied the preliminary injunction on this ground.⁴

Blue Bell challenges the district court's...