Aromatique, Inc. v. Gold Seal, Inc.

Decision Date20 September 1994
Docket NumberNos. 93-3260,93-3482,s. 93-3260
Citation28 F.3d 863
PartiesAROMATIQUE, INC., Appellee/Cross-Appellant, v. GOLD SEAL, INC., and Darrell Bufford, Appellants/Cross-Appellees.
CourtU.S. Court of Appeals — Eighth Circuit

Hermann Ivester, Little Rock, AR, argued, for appellants/cross-appellees.

James H. Druff, Little Rock, AR, argued (James H. Druff, Gary N. Speed and Kathryn Bennett Perkins, on the brief), for appellee/cross-appellant.

Before JOHN R. GIBSON, ** HANSEN and MORRIS SHEPPARD ARNOLD, Circuit Judges.

PER CURIAM.

For the reasons given in Parts I and II of the opinion filed by Judge Morris Sheppard Arnold, the judgment of the district court is reversed and the order is vacated. Aromatique's federal trademarks at issue here, Reg. Nos. 1,492,855 and 1,492,856, are cancelled. Gold Seal's request for attorneys' fees is denied.

MORRIS SHEPPARD ARNOLD, Circuit Judge.

This case began as an action filed in 1987 in the Chancery Court of Cleburne County, Arkansas, for infringement of Aromatique's trade dress. It was removed to federal district court after Aromatique amended its complaint to include a count of infringement of its recently registered federal trademarks for the trade dress at issue. Gold Seal counterclaimed for cancellation of the registration. The district court merged the trial on the merits with the hearing on Aromatique's motion for a preliminary injunction. The case was tried to the bench over ten days in September and October of 1988. Judgment in favor of Aromatique and an order enjoining Gold Seal from further infringement and awarding attorneys' fees to Aromatique were entered in September of 1993, 833 F.Supp. 739. Gold Seal appeals the judgment and the injunction; Aromatique cross-appeals for an accounting and disgorgement of profits.

I.

The trademarks at issue are the packaging of two of Aromatique's products, "The Smell of Christmas" and "The Smell of Spring." Aromatique first began marketing The Smell of Christmas in October, 1982, and The Smell of Spring in 1983. The Smell of Christmas is a potpourri the fragrance of which is associated with Christmastime; The Smell of Spring is a potpourri the fragrance of which is intended to evoke feelings of springtime. The packaging for both products is similar: the potpourri is packaged in pillow-shaped double cellophane bags that are closed at the top by gathering excess cellophane and tying the cellophane closed with cord tied in a square-knot bow. The small packages of The Smell of Christmas are closed with either red or green cord; the large are closed with both red and green cord. The Smell of Spring is packaged in a similar manner, but gold is its dominant color rather than red and green. The Smell of Spring is tied closed with an ecru cord. Each product has an oval label on one side of the cellophane bag: the Christmas product has a red label with gold writing and a gold border; the Spring product has a gold label with writing and border in a contrasting tone of gold. The prospective purchaser can both see and smell the potpourri, which has, according to Aromatique, aesthetic as well as olfactory appeal, by looking at the product through the transparent packaging and smelling the product through the center of the gathered cellophane.

Since 1987, both of Aromatique's products at issue here have included a metallic gold cord tied as part of the square knot. A folded, gold-colored tag apparently hangs from the gold cord. The tag includes the company name "Aromatique" with the initial A depicted as an illuminated upper case A printed with a woodblock. The tag also bears the trademark "the smell that remembers" in an italic typeface. The marks as described in the registrations do not include the hanging tag. The oval labels depicted and described in the registrations are blank: the Christmas label is red with a gold border and the Spring label is all gold. As described in the registration there are no words or marks that identify the products as those of Aromatique, except for the shape and configuration of the packaging itself which Aromatique, of course, claims identifies Aromatique as the source of the products.

On July 1, 1985, Aromatique filed applications with the United States Patent and Trademark Office to register the trade dress of the two products as trademarks. The PTO refused to register the marks because the they were not distinctive. In January of 1986, Aromatique submitted a brief and accompanying affidavit and exhibits arguing that the marks had acquired secondary meaning through Aromatique's use of the marks. The PTO again refused to register the marks, but this time concluded that they were not registrable because they were primarily functional. Aromatique then argued that others marketed potpourri in different packages and that the packaging for which registration was sought was "a configuration-type mark recognized as a good source indicator and constituting registrable subject matter." On June 21, 1988, the PTO registered the marks as Reg. Nos. 1,492,855 (for "The Smell of Christmas" trade dress) and 1,492,856 (for "The Smell of Spring" trade dress). The marks had previously been registered in several states, including Arkansas. The trademarks for the names "The Smell of Christmas" and "The Smell of Spring," as well as trademarks for Aromatique's name and label, were not subjects of Aromatique's action against Gold Seal, and, therefore, of course, the court's decision today has no effect on those marks.

Gold Seal argues that it began using its trade dress before 1985. In that year it sold a potpourri it called "Holiday Essence" in a clear, cellophane bag tied at the top with a red cord. Aromatique, through its attorneys, wrote to Gold Seal in October of 1985 asserting that Gold Seal's trade dress was infringing Aromatique's registered federal and state trademarks. The letter described Gold Seal's product and packaging as "aromatic room freshener" in a "clear plastic bag ... gathered at the neck" and tied with red cord. Affixed to the bag was a gold-colored oval label. (The PTO had at this time not yet registered Aromatique's claimed trade dress.) Gold Seal subsequently changed its packaging, using for a short time fabric ribbon instead of cord, and then began again to use cord. Gold Seal also changed its label, substituting for the gold oval a circular gold label with a serrated circumference (as around a seal), bearing the legends "NaturScent Potpourri" and "Holiday Essence" in black ink.

In 1986, Gold Seal's products included "Holiday Essence" and "Spring Essence." Gold Seal continued to use the circular, serrated label with black ink, but used a green cord with a gold mylar thread woven into the cord. At trial, Sandra Horne, vice president of Aromatique, testified that she did not believe that this packaging infringed Aromatique's trade dress.

In 1987, Gold Seal replaced the circular label with a label shaped like a butterfly. Holiday Essence now had a gold butterfly label with red ink; the package was closed with three cords, one green, one red, and one gold, that had been twisted together. Spring Essence used a gold butterfly label with blue ink; the package was closed with a white cord and a gold cord. Both products were dyed. By this time, Aromatique was also using gold cord to tie its packaging and had dyed its products. Holiday Essence was dyed so that most of its contents was either green or red, matching closely the green of the cord and the red of the label and cord. The potpourri was thus dyed in brighter hues of green and red than Aromatique used to dye its potpourri. By the time of the trial, in the autumn of 1988, Gold Seal had changed Spring Essence to include a light blue cord instead of the white one, and had dyed some of its contents to match the blue ink of the label.

Aromatique considered Gold Seal's changes in its dress in 1987 from the serrated label to the butterfly, from the single cord to the multiple cord, and from black ink to colored ink, to be changes designed to infringe Aromatique's trade dress. In that year, Gold Seal received a second letter from Aromatique demanding that it cease and desist infringing Aromatique's trademarks because Gold Seal's packaging was confusingly similar to Aromatique's own. Aromatique again asserted that Gold Seal was infringing registered state and federal trademarks although federal trademarks for the asserted trade dress still had not been registered. As a result of Gold Seal's failure to respond to that letter, Aromatique brought the suit that led eventually to this appeal.

Because of Horne's admission that Gold Seal's products of 1986 do not infringe Aromatique's trade dress, the accused products are limited to Gold Seal's Holiday Essence and Spring Essence sold after 1986. Similarly, the testimony and pleadings excluded from the set of accused products Gold Seal's other similarly packaged products such as "Wisteria Essence" and "Mulberry Essence," which were admitted into evidence at trial.

II.
A.

Trade dress is the "total image of a product, the overall impression created, not the individual features." Woodsmith Publishing Co. v. Meredith Corp., 904 F.2d 1244, 1247 (8th Cir.1990). But the mere method and style of doing business is not protectable. Prufrock Ltd. v. Lasater, 781 F.2d 129, 131-32 (8th Cir.1986). Indeed, " '[i]t would be ludicrous ... to suggest that in our free enterprise system, one producer and not another is permitted to take advantage of [a] marketing approach to enhance consumer reception of its product.' " Prufrock, supra, 781 F.2d at 132 (quoting Haagen-Dazs, Inc. v. Frusen Gladje, Ltd., 493 F.Supp. 73, 75 (S.D.N.Y.1980)). Trade dress does not protect one from a competitor's imitation of one's marketing concept. Prufrock, supra, 781 F.2d at 132.

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