Giorgio Beverly Hills v. Revlon Consumer Products, 94 Civ. 6139 (KTD).

• Decision Date: 07 November 1994
• Docket Number: No. 94 Civ. 6139 (KTD).,94 Civ. 6139 (KTD).
• Parties: GIORGIO BEVERLY HILLS, INC., Plaintiff, v. REVLON CONSUMER PRODUCTS CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of New York

869 F. Supp. 176

GIORGIO BEVERLY HILLS, INC., Plaintiff, v. REVLON CONSUMER PRODUCTS CORPORATION, Defendant.

No. 94 Civ. 6139 (KTD).

United States District Court, S.D. New York.

November 7, 1994.

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Robin, Blecker, Daley & Driscoll, New York City, for plaintiff Giorgio Beverly Hills, Inc. (Marie V. Driscoll, of counsel).

Paul, Weiss, Rifkind, Wharton & Garrison, New York City, for defendant Revlon Consumer Products Corp. (Arthur L. Liman, of counsel).

MEMORANDUM & ORDER

KEVIN THOMAS DUFFY, District Judge:

On August 26, 1994, Giorgio Beverly Hills, Inc. ("Giorgio"), filed a civil complaint alleging that Revlon Consumer Products Corporation's ("Revlon") use of the name "Charlie RED" in connection with its new line of fragrances infringes upon Giorgio's trademark in "RED", in violation of 15 U.S.C. §§ 1114, 1125(a) (Lanham Act §§ 32, 43(a)) and New York General Business Law § 368-d, and constitutes unfair competition under New York common law. Revlon counterclaimed for cancellation of Plaintiff's registered trademark in "RED". Subsequently, Plaintiff moved for a preliminary injunction restraining Revlon from using "RED" or any confusingly similar trademark in connection with the offer, distribution, promotion, advertising, or sale of fragrance products. A hearing on the preliminary injunction motion was held at which both parties presented exhibits and witnesses.

For the following reasons, Plaintiff's motion for a preliminary injunction is denied.

I.

Giorgio and Revlon are two of the most well-known producers in the fragrance industry. Revlon's Charlie and Giorgio's RED have each enjoyed a great deal of popularity and success in terms of sales.

During its first three years on the market, Giorgio's RED was the best selling fragrance brand, and it currently remains among the top five best-selling brands. To date, RED and its line extension RED for Men have generated over two hundred million dollars ($200,000,000), predominantly through sales in high-price department stores. The costs of advertising and promoting RED have exceeded ninety-five million dollars ($95,000,000). Giorgio has a registered trademark in both "RED" and "RED for Men".

The year 1973 marked the introduction of Charlie, which has become Revlon's most valuable fragrance mark. Since its introduction more than two decades ago, Charlie has generated approximately one billion dollars ($1,000,000,000) in sales, most of which are made through mass market stores. Nearly one hundred million dollars ($100,000,000) has been spent by Revlon to advertise Charlie. Furthermore, the original Charlie has spawned a line of Charlie fragrances, including Charlie Express, Charlie Madison Avenue, and Charlie White.

In July 1993, Revlon introduced "Charlie RED" into the European marketplace. Revlon's European advertising campaign juxtaposed the original Charlie, packaged in blue, with the new Charlie RED, packaged in red.

Inspired by its European successes with the launch of Charlie RED and what it dubbed the "relaunch" of original Charlie, Revlon decided to introduce Charlie RED to the American market this year. Revlon's strategy was the same as in Europe: to place original Charlie and Charlie RED side-by-side in advertising, as well as in store displays. In anticipation of the holiday season and the corresponding increased demand for fragrance products, Revlon launched Charlie RED in this country on September 1, 1994.

II. DISCUSSION

A party seeking a preliminary injunction bears a two-part burden. First, the movant must demonstrate that it will suffer irreparable harm absent the requested injunction. In addition, the movant must also show either a likelihood of success on the merits, or that there exists a sufficiently serious question on the merits combined with a balancing of hardships weighing decidedly in the movant's favor. Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1038 (2d Cir.1992); Standard & Poor's Corp., Inc. v. Commodity Exchange, Inc., 683 F.2d 704, 707 (2d Cir.1982).

A. Lanham Act Claims

On a motion for a preliminary injunction involving §§ 32 and 43(a) of the Lanham Act, the movant can demonstrate both irreparable harm and the likelihood of success on the merits by showing a likelihood of significant consumer confusion or misunderstanding as to the source or sponsorship of the product(s) in question. Bristol-Myers Squibb, 973 F.2d at 1038; Standard & Poor's, 683 F.2d at 708. As set forth in Polaroid Corporation v. Polarad Electronics Corporation, eight factors are relevant in assessing the likelihood of confusion: (1) strength of the plaintiff's mark, (2) similarity of the plaintiff's and the defendant's marks, (3) competitive proximity of the products, (4) likelihood that the prior owner of the trademark will bridge the gap, (5) actual confusion, (6) intent of the defendant in adopting the mark (i.e. whether the defendant acted in bad faith), (7) quality of the defendant's product, and (8) sophistication of the consumers. 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). These factors apply to both non-competing and competing products. Thompson Medical Co., Inc. v. Pfizer Inc., 753 F.2d 208, 214 (2d Cir.1985).

1. Strength of Plaintiff's Mark

The strength of a trademark depends on its ability to identify the particular source of a product, even if that source remains anonymous. W.W.W. Pharmaceutical Co., Inc., v. Gillette Co., 984 F.2d 567, 572 (2d Cir.1993). Two factors are relevant to a determination of the strength of a trademark: (1) inherent distinctiveness and (2) distinctiveness in the marketplace. Id. Inherent distinctiveness consists of four categories of marks: (1) generic marks, which are common descriptions and do not receive protection; (2) descriptive marks, which employ ordinary language to describe the characteristics of the product and receive protection only upon evidence that a secondary meaning for the mark has been established; (3) suggestive marks, which imply rather than literally describe the characteristics of the product, and which necessitate that the consumer utilize imagination, thought, and perception to determine the nature of the product; and (4) arbitrary or fanciful marks, which receive protection even absent any evidence that a secondary meaning for the mark has been established. Id.

Giorgio's "RED" mark cannot be considered generic or descriptive. Plaintiff's product carries a golden hue. The bottle the product is contained in is clear. Only the external trade dress is colored red. Hence, the word "red" identifies no physical characteristic of the product itself, and its use as a mark is neither generic nor descriptive.

As discussed more fully below, the word "red" and the color it represents have certain connotations and elicit certain emotions which Plaintiff wants consumers to associate with its product. Giorgio is not the first company to utilize the word and/or color red, and cannot claim that it created or cultivated their connotative meanings, even with regard to the perfume market alone. (See Karp Aff. Ex. A) (trademark search uncovering more than 25 current or former fragrance products incorporating "red" dating back to 1930s). Because of its connotative meanings, "red" has developed a certain traditional significance which has proven particularly adaptable to fragrance products, and has been so adapted for decades. (See Karp Aff. Ex. A.) As a result, Giorgio's mark "RED" is not arbitrary or fanciful. Cf. Nina Ricci, S.A.R.L. v. Gemcraft Ltd., 612 F.Supp. 1520, 1527 (S.D.N.Y.1985) ("L'Air" is mark "particularly appropriate for fragrances," thereby reducing strength of the plaintiff's mark "L'Air du Temps" to weak suggestive).

The color red traditionally evokes romance, passion, love, and other strong emotions. These connotations at least partially inspired Giorgio to adopt the word "RED" for its mark. According to Giorgio's former president and chief executive officer, and also according to its current president, the company "chose the name Red because the color is vibrant and dramatic and it's also associated with passion and romance. While the actual fragrance is subtle, the color is definitely sexy." (Karp Aff. Ex. D).

The mark "RED" invites the consumer to employ a bit of perception, thought, and imagination, to reach the conclusion that Giorgio's fragrance is romantic, passionate, and sexy, and/or that the consumer will elicit the corresponding emotions from others when wearing the fragrance. Compare Elizabeth Taylor Cosmetics v. Annick Goutal, 673 F.Supp. 1238, 1243 (S.D.N.Y.1987) (imagination required to connect emotion to fragrance). Because it implies the characteristics of Giorgio's product, "RED" is a suggestive mark. Compare Nina Ricci, S.A.R.L., 612 F.Supp. at 1527 ("L'Air" is suggestive rather than arbitrary) with Elizabeth Taylor Cosmetics, 673 F.Supp. at 1243-44 (despite frequent use in fragrance advertising, "passion" is suggestive mark rather than descriptive).

However, classification as a suggestive mark does not automatically render the mark a strong one. W.W.W. Pharmaceutical, 984 F.2d at 572. Public identification of the mark with a certain product may also be considered in determining the strength of a mark. Id. at 573. Various factors may be examined to prove the existence of secondary meaning, including advertising expenditures, amount of sales, unsolicited media coverage, and length and exclusivity of the plaintiff's use of the mark. Thompson Medical Co., 753 F.2d at 217 (citations omitted). To prove that "RED" has acquired such a secondary meaning, Plaintiff mentions its expenditures of over $95,000,000 for advertising and promotion, (Gray Aff. ¶ 8), as well as distribution of millions of samples and scent strips. (Gray Aff. ¶ 9.) Moreover, sales of RED and RED FOR MEN average an impressive $50,000,000 — $100,000,000 annually. (Gray Reply ...