917 F.2d 1024 (7th Cir. 1990), 89-2528, NutraSweet Co. v. Stadt Corp.

Docket Nº:89-2528, 89-3097.
Citation:917 F.2d 1024
Party Name:16 U.S.P.Q.2d 1959 The NUTRASWEET COMPANY, Plaintiff-Appellant, v. The STADT CORP. and Cumberland Packing Corp., Defendants-Appellees.
Case Date:November 08, 1990
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit

Page 1024

917 F.2d 1024 (7th Cir. 1990)

16 U.S.P.Q.2d 1959

The NUTRASWEET COMPANY, Plaintiff-Appellant,


The STADT CORP. and Cumberland Packing Corp., Defendants-Appellees.

Nos. 89-2528, 89-3097.

United States Court of Appeals, Seventh Circuit

November 8, 1990

Argued Feb. 20, 1990.

Page 1025

Stephen P. Durchslag, Winston & Strawn, Henry L. Mason, III, Sidley & Austin, Stanley J. Adelman, Mark I. Feldman, Gary M. Sircus, David G. Lynch, Rudnick & Wolfe, Chicago, Ill., Gwenda M. Burkhardt, Deerfield, Ill., for plaintiff-appellant.

Martin G. Raskin, Steinberg & Raskin, New York City, Henry S. Kaplan, Marshall W. Sutker, Dressler, Goldsmith, Shore, Sutker & Milnamow, Chicago, Ill., for defendants-appellees.

Before COFFEY and RIPPLE, Circuit Judges, and REYNOLDS, Senior District Judge. [*]

REYNOLDS, Senior District Judge.

This is an action for trade-dress infringement and unfair competition to enjoin defendants-appellees Stadt Corporation ("Stadt") and Cumberland Packing Corporation ("Cumberland") from packaging their sugar substitute, "Sweet One," in a blue packet. The plaintiff-appellant NutraSweet Company ("NutraSweet") appeals the district court's denial of its motion for a preliminary injunction and the district court's grant of summary judgment in favor of Stadt and Cumberland. 1 The issue for this court to decide is whether color can be a trademark. The district court said no. We affirm.



  1. Facts

    The parties each manufacture and distribute sugar substitute products in single-serving-size colored packets which are offered to consumers in restaurants and other food service establishments. Cumberland is a New York corporation whose predecessor in interest was a family business headed by Benjamin Eisenstadt (Cumberland's predecessor in interest will also be referred to as "Cumberland"). In 1948, Benjamin Eisenstadt changed the nature of the business of Cumberland from a cafeteria to a packaging company based upon the concept of packaging granulated refined sugar ("sugar") in small single-serving-size white packets or envelopes. Since 1948, sugar has been packaged and sold by refiners and packers in single-serving-size white paper packets. The use of white paper for sugar packets is, and has been since their introduction in about 1948, a widespread and customary practice in the sugar industry. 2 Since their introduction, sugar packets made of white paper have been made available to patrons of food service establishments, such as restaurants, in bowls or caddies provided on restaurant tables and counters. From 1948 to 1958, the white sugar packets were the only sweetener packets available in such bowls or caddies.

    In 1958, Cumberland began to manufacture and sell granulated low calorie sugar substitute for tabletop use in single-serving-size pink paper packets under the brand name "Sweet 'N Low." "Sweet 'N Low" sugar substitute was the first granulated sugar substitute to be packaged in such packets. "Sweet 'N Low" began appearing in restaurants, hotels, and other food service outlets in 1958 alongside the sugar packets in the same bowls or caddies. "Sweet 'N Low" packets were packaged in pink paper to distinguish them from sugar packets made of white paper.

    After "Sweet 'N Low" was introduced in its pink packet, producers began and are

    Page 1026

    now packaging their respective brands of granulated sugar substitute in packets made of colored paper. In 1981, NutraSweet introduced "Equal," a sugar substitute, in packets made of white paper. These white packets resembled many of the single-serving-size packets used by competitors to package sugar; therefore, in 1982, NutraSweet decided to distinguish the appearance of its "Equal" packets by using a blue background. 3

    In 1988, Cumberland and Stadt introduced a new sugar substitute called "Sweet One" in single-serving-size packets. "Sweet One" is packaged in a blue packet. NutraSweet does not contend that the color of the "Sweet One" packet is the same shade of blue as the "Equal" packet, and a review of the packets reveals that they are not the same shade of blue. NutraSweet does contend, however, that "Sweet One" is packaged in confusingly similar pastel blue packets. NutraSweet challenges appellees' use of blue packets as an infringing trade dress under the Lanham Act, 15 U.S.C. Sec. 1051 et seq., the Illinois Consumer Fraud and Deceptive Trade Practices Act, Ill.Rev.Stat. ch. 121 1/2, p 311, et seq., and the Illinois Anti-Dilution Act, Ill.Rev.Stat. ch. 140, p 22. (Brief of Plaintiff-Appellant, 89-2528, p. 1).

  2. Procedural History

    NutraSweet commenced this action for a preliminary and permanent injunction on February 17, 1989. Cumberland and Stadt answered the complaint and filed a counterclaim. Cumberland and Stadt then moved for summary judgment seeking dismissal of NutraSweet's trade-dress infringement, unfair competition, deceptive trade practices, and dilution claims (Counts I, III, IV and V). NutraSweet opposed the motion.

    NutraSweet then filed a motion for a preliminary injunction and a motion to set an evidentiary hearing on the motion for a preliminary injunction. The district court denied NutraSweet's motion for an evidentiary hearing on the motion for a preliminary injunction and denied NutraSweet's motion for a preliminary injunction based upon the affidavits and other evidence offered in support of and in opposition to the motion for summary judgment but did not rule on the summary judgment motion. NutraSweet filed a notice of appeal from that order (Appeal No. 89-2528). Later, on September 25, 1989, the district court granted the summary judgment motion and NutraSweet filed its notice of appeal from that order (Appeal No. 89-3097). On October 4, 1989, the district court certified its ruling on the motion for summary judgment, nunc pro tunc for September 25, 1989, as a final order under 54(b) of the Federal Rules of Civil Procedure and this court consolidated the two appeals for purposes of disposition....

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