WL Gore & Associates, Inc. v. Totes Inc., Civ. A. No. 92-39-JLL.

• Decision Date: 01 April 1992
• Docket Number: Civ. A. No. 92-39-JLL.
• Citation: 788 F. Supp. 800
• Court: U.S. District Court — District of Delaware
• Parties: W.L. GORE & ASSOCIATES, INC., Plaintiff, v. TOTES INCORPORATED, Defendant.

788 F. Supp. 800

W.L. GORE & ASSOCIATES, INC., Plaintiff, v. TOTES INCORPORATED, Defendant.

Civ. A. No. 92-39-JLL.

United States District Court, D. Delaware.

March 19, 1992.

As Amended April 1, 1992.

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COPYRIGHT MATERIAL OMITTED

Robert H. Richards III, Allen M. Terrell, Jr. and Robert W. Whetzel of Richards, Layton & Finger, Wilmington, Del., David H. Pfeffer, Janet Dore, Dickerson M. Downing, Gabriel Kralik of Morgan & Finnegan, New York City, and John S. Campell of W.L. Gore & Associates, Inc., Newark, Del., of counsel, for plaintiff.

Rudolf E. Hutz and Collins J. Seitz, Jr. of Connolly, Bove, Lodge & Hutz, Wilmington, Del., and J. Robert Chambers, Gregory F. Ahrens of Wood, Herron & Evans, Cincinnati, Ohio, of counsel, for defendant.

OPINION

LATCHUM, Senior District Judge.

The plaintiff, W.L. Gore & Associates, Inc. ("Gore"), seeks a preliminary injunction to prevent Totes Incorporated ("`totes'") from making false and misleading descriptions and/or representations of fact in its advertising and from infringing on its trademark.<sup>1</sup> The plaintiff questions whether `totes' is telling the whole truth about its product in its advertisements and its literature.

To obtain relief, the plaintiff must make a showing of four factors: (1) reasonable probability of success on the merits, (2) irreparable injury absent relief, (3) the possibility of harm to the defendant and other interested parties, and (4) the public interest. Opticians Ass'n of America v. Independent Opticians of America, 920 F.2d 187, 191-92 (3d Cir.1990) (citing Bill Blass, Ltd. v. Saz Corp., 751 F.2d 152, 154 (3d Cir.1984)); Sandoz Pharmaceuticals Corp. v. Richardson-Vicks, Inc., 735 F.Supp. 597, 600 (D.Del.1989), aff'd, 902 F.2d 222 (3d Cir.1990) (citing Eli Lilly & Co. v. Premo Pharmaceutical Laboratories, Inc., 630 F.2d 120, 136 (3d Cir.), cert. denied, 449 U.S. 1014, 101 S.Ct. 573, 66 L.Ed.2d 473 (1980)). The defendant argues that the plaintiff cannot make the appropriate showing for a preliminary injunction because its claims are true and, in the alternative, that the plaintiff has not suffered irreparable damage and that the delay in bringing suit undercuts the urgency of this type of relief.

For the reasons set forth below, this Court finds that certain statements contained in the `totes' advertisements are likely to be shown to be false and misleading and that the plaintiff is likely to succeed on the merits under the Lanham Act. Furthermore, this Court finds irreparable harm to the plaintiff and a need to protect the public from confusion and deception. Therefore, in this Court's discretion, the plaintiff's motion for preliminary injunctive relief will be granted with respect to the false and misleading claims discussed infra. An order will be entered in accordance with this opinion.

I. RELEVANT BACKGROUND

Over the last thirty-five years, Gore expanded its operations from the manufacture of wire and cable to the manufacture of products in many different industries. (Docket Item "D.I." 1 ¶¶ 6-7.) Among Gore's most successful products is its patented GORE-TEX fabric which is simultaneously waterproof and breathable, although these are generally contradictory properties, and it is windproof as well. (D.I. 1 ¶ 8; 7 Hoover Decl. ¶¶ 2-3; 14 McElwee Decl. ¶ 3, Ex. 8.) A membrane laminated to the fabric itself ensures that these features are uniform over the entire garment and the fabric has become the standard by which the performance of other fabrics are judged. (D.I. 6 at 7; 7 Hoover Decl. ¶¶ 2-3; 10 Ex. 5; McElwee Decl. ¶ 3 Ex. 13; 14 Exs. 9, 10, 11, 12.)² The GORE-TEX fabric is sold under the trademarked slogan GUARANTEED TO KEEP YOU DRY. (D.I. 1 ¶¶ 14-15, 17; 6 at McElwee Decl. ¶ 7, Exs. 11, 14.)³

Defendant `totes', also a well established company, is a leader in umbrellas and footwear/wearing apparel for inclement weather. (D.I. 27; 36.) The focus of the dispute is the defendant's golf suits, which compete with golf suits manufactured from GORE-TEX fabric, and the advertisements designed to sell the defendant's golf suits. (D.I. 1 ¶ 18; 38 Rastani Decl. ¶ 3.) Both the construction of the defendant's suit and the advertisements have changed over the relevant time period. When `totes' designed the suits in March of 1985, the golf suits consisted of a single layer of TECH-TEX fabric. Although the fabric supplier changed in January of 1988, `totes' made no changes to the single layer construction and the fabric remained substantially the same. A liner was added to the back of the pants in May of 1989 and to the sleeves of two styles⁴ of golf suits in September of 1991. (D.I. 7 ¶ 9; 11 Martucci Decl. ¶ 5; 41 at 2; 44 at 25-26; 46 Fritz Decl.)

In the initial 1986 advertising, the TECH-TEX fabric was billed as "the Hi-Tech Break-Through in Super-Breathable/Water Resistant Fabrics," and that it "combined superior air breathability and water-resistance to provide ... the ultimate in comfortable golf rain suit." The advertisements described the `totes' golf suits as "breathable," "quiet," "soft," "water-resistant," and "durable," and stated that "TECH-TEX keeps water out and allows sweat vapor to pass through, quickly ... easily." (D.I. 27 Exs. 2, 3; 37 Exs. 2, 3; 38 Rastani Decl. ¶¶ 4, 5.) `totes' compared the breathability between TECH-TEX and GORE-TEX, stating that "seven times more air passes through TECH-TEX than through GORE-TEX ... every second," concluding that "TECH-TEX fabric is seven times more breathable than GORE-TEX fabric." `totes' continued to make similar claims in the following years. (D.I. 27 Exs. 4, 5; 37 Ex. 4; 38 Rastani Decl. ¶¶ 6, 7.)

In January of 1990⁵ the advertisements continued the previous claims but also began stating that: (1) TECH-TEX is "the best way to keep dry, keep cool and keep playing," (2) "rain rolls right off, but air and sweat vapor pass right through," and (3) that the TECH-TEX golf rainsuit was "waterproof." (D.I. 7 Ex. 3; 27 Ex. 5; 37 Exs. 5, 6.) To illustrate its confidence in its product, `totes' guaranteed<sup>6</sup> the performance of its golf suit. (D.I. 37 Ex. 5.) These claims continue to the present time. (D.I. 27 Ex. 6; 37 Ex. 6; 38 Rastani Decl. ¶ 8.) In September of 1991<sup>7</sup>, a new advertisement guaranteed that the `totes' rainsuit would keep the golfer dry and promised that the fabric was the "best waterproof fabric you can find." (D.I. 7 Ex. 1; 37 Ex. 11; 27 Ex. 7.) According to the advertisement, TECH-TEX is "guaranteed waterproof yet it is extremely breathable, allowing seven times more air and sweat vapor to pass through the rainsuit than suits produced from GORE-TEX fabric." (D.I. 7 Ex. 1.) The advertisement asserted that "the `totes' TECH-TEX rainsuits are ideal for bad weather conditions on the course because they are waterproof, windproof, breathable, and quiet." The suit is to keep the golfer "cool, dry and comfortable." (D.I. 7 Ex. 1.)

II. DISCUSSION

The plaintiff contends that the defendant's current advertisements include statements and comparisons that are false and misleading. In essence, Gore does not believe that `totes' can truthfully say that a golf suit made of TECH-TEX fabric is truly and uniformly waterproof, breathable, and windproof. (7 Hoover Decl. ¶¶ 6, 9.) Gore claims that each suit is constructed of (1) a breathable, but not waterproof or windproof, outer shell, and (2) a water and wind resistant, but not breathable, liner used in selected parts of the garment. In other words, Gore alleges that the `totes' golf suits are only partially breathable, waterproof, and windproof but that the advertisements have led consumers to believe and to expect that the entire suit is waterproof, windproof, and breathable.

A. Reasonable Probability Of Success On The Merits

"To prevail on a claim of unfair competition under federal law⁸, a plaintiff must first prove by a preponderance of the evidence that the claims it challenges are either false or misleading." Sandoz Pharmaceuticals Corp. v. Richardson-Vicks, Inc., 735 F.Supp. at 600; Toro Co. v. Textron, Inc., 499 F.Supp. 241, 251 (D.Del. 1980). If the party challenging the advertising claim under § 43(a) shows actual deception, that the claim is literally false, the court need not consider the actual effect on the buying public. Upjohn Co. v. Riahom Corp., 641 F.Supp. 1209, 1222 (D.Del.1986). When the advertising claim is false, the court may grant relief on its own findings that the advertisements have a "tendency to deceive". Stiffel Co. v. Westwood Lighting Group, 658 F.Supp. 1103, 1111 (D.N.J.1987). However, "literal falsity" must be considered within the context in which the message was conveyed. Id., 658 F.Supp. 1103, 1110 (D.N.J.1987); Plough, Inc. v. Johnson & Johnson Baby Products, 532 F.Supp. 714, 716-17 (D.Del.1982).

If the claims are not so clearly false⁹, the claim may be literally true but misleading, then the court must consider the effect on the buying public. Sandoz Pharmaceuticals v. Richardson-Vicks, Inc. 735 F.Supp. at 600. The party challenging the claims must persuade the Court, either through market research, consumer studies, or other evidence, that the persons receiving the message will be left with a false impression about the product and that the deceptive statement is "material, in that it is likely to influence the purchasing decision." Toro Co. v. Textron, Inc., 499 F.Supp. at 251; Stiffel Co. v. Westwood Lighting Group, 658 F.Supp. at 1111. The Court must determine whether the evidence shows that the advertising claim has a tendency to deceive. Sandoz Pharmaceuticals Corp. v. Richardson-Vicks, Inc., 735 F.Supp. at 600; Toro Co. v. Textron, Inc., 499 F.Supp. at 251 (no requirement that purchasers actually be deceived).

1. Waterproof

`totes' claims that the TECH-TEX fabric is waterproof and, from this claim, promises that the golf rainsuit is waterproof. (D.I. 7 Ex. 1; 27 Ex. 6; 37 Ex. 5.) In connection with this claim, `totes' promises that the fabric/suit will keep...