Aromatique, Inc. v. Gold Seal, Inc.
| Citation | 833 F. Supp. 739 |
| Decision Date | 07 September 1993 |
| Docket Number | Civ. No. LR-C-88-500. |
| Parties | AROMATIQUE, INC., Plaintiff, v. GOLD SEAL, INC. and Darrell Bufford, Defendants. |
| Court | United States District Courts. 8th Circuit. United States State District Court of Eastern District of Arkansas |
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James H. Druff, Rose Law Firm, Little Rock, AR, Michael E. Irwin, Reed, Irwin & Tilley, Heber Springs, AR, Carol S. Arnold, Preston, Thorgrimson, Shidler, Gates & Ellis, Seattle, WA, for plaintiff.
Hermann Ivester, Ivester, Skinner & Camp, Stephen L. Curry, Kemp, Duckett, Hopkins & Spradley, Little Rock, AR, for defendants.
Aromatique filed suit in the Cleburne County Chancery Court on December 22, 1987, alleging trademark infringement of the trade dress for "The Smell of Christmas" and "The Smell of Spring" and unfair competition under Arkansas law. Named as defendants were Gold Seal, Inc. and Darrell Bufford. Defendants removed the case to this Court on July 22, 1988, after the filing of the second amended complaint on July 14, 1988, that added an alleged violation of the Lanham Act. Along with the removal, defendants filed a counterclaim for infringement and for cancellation of Aromatique's federal trademark registrations.
Trial was held before the Court from September 26, 1988, through October 7, 1988. Since Aromatique had failed to introduce proof of damages, the Court dismissed plaintiff's request for an accounting. The Court also dismissed Bufford in his individual capacity and dismissed that portion of Gold Seal's counterclaim relative to infringement.
After preparation of the transcript, the parties submitted their post-trial briefs, proposed findings of fact and conclusions of law on December 28, 1990. The reply briefs were submitted on January 7, 1991.
On May 28, 1991, Gold Seal filed a motion for reconsideration of the admissibility of its Exhibit # 73. Aromatique responded to that motion on June 11, 1991, and separately moved for sanctions under Civil Procedure Rule 11 for the filing of the motion to reconsider. Gold Seal responded to that motion on June 25, 1991.
1. This is a civil action for trademark infringement and unfair competition arising under the trademark laws of the United States, 15 U.S.C. §§ 1051 et seq. (the Lanham Act) and the law of the State of Arkansas, Ark.Code Ann. § 4-71-112(a)(1).
2. Aromatique is a corporation organized under the laws of the State of Arkansas with its principal place of business in Cleburne County, Arkansas. Aromatique is in the business of manufacturing, selling and distributing products marketed under the names "The Smell of Christmas" and "The Smell of Spring."
3. Gold Seal is a corporation organized under the laws of the State of Arkansas with its principal place of business in Cleburne County, Arkansas. Gold Seal is in the business of manufacturing, selling, and distributing products marketed under the names "Holiday Essence" and "Spring Essence." No evidence was offered at trial to prove that Bufford acted in his individual capacity with respect to the allegedly infringing trade dress.
4. The current products marketed by these parties and others contain leaves, acorns, wood chips, pine cones, and assorted other natural items to which aromatic oils are added. The "potpourri" is used by placing it in an open container as visual decoration emitting a pleasant aroma. Refresher oils, sold separately, can be added to the "potpourri."
5. At the request of Sandra Horne, who owned a gift shop in Heber Springs, Patti Upton concocted a unique textured blend of pine cones, wood shavings, sweet gumballs, nuts and cinnamon scented oils which she called "The Smell of Christmas" during October of 1982.
6. "The Smell of Christmas" was not a traditional potpourri, but was intended to be a new category of product, a decorative room fragrance, using natural elements from the out-of-doors to be displayed in open containers in rooms.
7. Horne, who was experienced in retailing, carried many gift items in her store, including traditional potpourri, regularly attended national trade shows displaying gift items, and reviewed magazines and catalogs. Before 1982, Horne had never seen a product like "The Smell of Christmas."
8. "The Smell of Christmas" was packaged in a large and small size,1 consisting of a clear double-cellophane bag presented in a pillow shape, with the excess cellophane gathered at the top into a "flower." The first wholesale purchase of cellophane bags for "The Smell of Christmas" package was September 14, 1982. Both the large and small packages were tied with cords in square-knot bows. The large bags had red and green rope-like cords while the small bags had either the green or the red cord. Round gold or red labels inscribed with "Merry Christmas" were used on the package.
9. In May or June of 1983, Aromatique adopted a different label for the 1983 Christmas season and placed an order for that label for delivery in July of 1983. The label, which was used for "The Smell of Christmas" during the 1983 season, was a smaller oval with a red foil background and the depiction of a reindeer head.
10. In July of 1984, Aromatique adopted the current oval red and gold foil label with the woodblock "A." Gold metallic strings, that had been considered in early 1986, were added to the square-knot bows in 1987.
11. Early in 1983, Aromatique introduced a second product, "The Smell of Spring," a decorative room fragrance with a spring scent, which was packaged in the large and small sized pillow-shaped clear double-cellophane bags, gathered at the top into a "flower" of the excess cellophane with a gold-on-gold oval label and ecru cords. Gold metallic strings were added to the packages in 1987.
12. From the time Aromatique first marketed "The Smell of Spring" in 1983, it used an oval label. The first label was blue and white with a depiction of a hummingbird on it, but that label lasted only two weeks. On February 9, 1983, Aromatique ordered a gold-on-gold oval label with the hummingbird and recalled the product with the blue and white oval label. By July of 1984, the current gold-on-gold oval label with the woodblock "A" was adopted and has been in continuous use since then.
13. The words "Heber Springs" appear prominently on the label, and the products have come to be identified with Aromatique's place of business there. The labels are attached to the inner bag before the second bag is placed on the outside.
14. Attached to each package is a hang tag with a warning about putting the product in open containers and not directly on furniture, and with instructions about enhancing the fragrances with Aromatique's refresher oil. In 1985, a non-folding hang tag was added to the packages for both products that read:
15. In 1986, a folding gold hang tag was added to both packages with a change in the wording. The upper part of the tag read:
The lower part substituted the following language for the sentence on the 1985 tag beginning with "packaged" through "finishes":
Aromatique fragrances are long-lasting. If you wish to enhance the fragrance, ask for the Aromatique Refresher Oil.
16. Aromatique started using a wash dye on the wood shavings in "The Smell of Spring" in 1987.
17. The packages were first displayed in Horne's shop in 1982 in a large basket where no one package could be completely seen by the consumer and the product was displayed in unopened containers. These means of displaying Aromatique's products are still in use in retail stores.
18. The first interstate sale of "The Smell of Christmas" was November 5, 1982, and the first interstate sale of "The Smell of Spring" was March 7, 1983. On February 10, 1983, Aromatique incorporated in the State of Arkansas.
19. Aromatique submitted two separate applications for registration of the trade dress of "The Smell of Christmas" and "The Smell of Spring" on June 26, 1985. Both applications were initially rejected by Gabrielle Siman, the examining attorney, on August 22, 1985, because she did not believe the trade dress was distinctive and evidence of secondary meaning had not been presented.
20. The applications were amended on January 31, 1986, to claim that the trade dress had acquired distinctiveness or secondary meaning. Affidavits were submitted about the advertising and promotion of Aromatique's products; the extensive free publicity accorded Aromatique and its products; the states in which the trade dress was registered; letters from various dealers and distributors attesting to the distinctiveness of the trade dress; and information as to how Aromatique protected its marks against adverse users. Siman refused registration on May 5, 1986, finding that the design appeared to be primarily functional in nature.
21. Second amendments to each application were filed on October 10, 1986, claiming that the trade dress is non-functional. Following her review of the submitted materials and interview with attorneys for Aromatique, Siman recommended that plaintiff's trade dress trademarks be published on the Public Register on March 17, 1987. The notice of publication drew opposition from Joseph M. Gyulay, d/b/a Countryside Herb Farm, but that opposition was dismissed without prejudice on March 11, 1988.
22. The trade dress trademarks were registered on the Principal Register in the U.S. Patent and Trademark Office (PTO) on June 21, 1988, with Registration No. 1,492,855 for "The Smell of Christmas" and No. 1,492,856 for "The Smell of Spring." These registrations are prima facie evidence of the validity, ownership and...
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