Häagen-Dazs, Inc. v. Frusen Glädjé Ltd., 80 Civ. 1930 (KTD).
| Decision Date | 09 June 1980 |
| Docket Number | No. 80 Civ. 1930 (KTD).,80 Civ. 1930 (KTD). |
| Citation | 493 F. Supp. 73 |
| Parties | HÄAGEN-DAZS, INC., Plaintiff, v. FRUSEN GLÄDJÉ LTD., A. B. Calip Dairies, Inc., Seligco Food Corp., Dolly Madison Industries, Inc., Pickwick Sales Corporation, T & W Suffolk Inc., Nelson Ice Cream Company, Inc., Richard Smith, Stephen Smith and Edward Lipitz, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Kaye, Scholer, Fierman, Hays & Handler, New York City, for plaintiff; Milton J. Schubin, William M. Borchard, Alan L. Mittman, New York City, of counsel.
James H. Callahan, Kenyon & Kenyon, New York City, for defendants; Robert D. Fier, William T. Boland, New York City, of counsel.
Successful commercial marketing has many rewards. Most important to the marketer are the financial rewards to be reaped. However, when a manufacturer develops a novel marketing approach — a commercial concept meeting with a receptive consumer — the concept is often imitated. This is precisely what occurred in the case at bar.
Plaintiff, Häagen-Dazs, Inc., is the producer of Häagen-Dazs ice cream. Häagen-Dazs has come to be known as a premium ice cream product. The defendants are the producers and distributors of Frusen Glädjé ice cream which, although a recent entrant into the ice cream market, is advertised as a premium ice cream product.
Plaintiff commenced the instant suit charging defendants with unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a), and New York State Law. In addition, plaintiff charges that defendants are attempting to palm their product off as that of the plaintiff.
The essence of plaintiff's claim is that defendants have packaged their product in such a way as to "cash in on the commercial magnetism of the exclusive marketing technique developed . . . by the family which owns and operates Häagen-Dazs." Plaintiff's Memorandum at 2. In particular, plaintiff focuses upon five features on defendants' ice cream container which it charges were taken directly from its ice cream container in an effort to appeal to Häagen-Dazs customers and confuse them into believing that defendants' product is related to the Häagen-Dazs line. These features are: (i) the phraseology used in reciting the ingredients of the product in issue; (ii) a recitation of the artificial ingredients not contained in the product; (iii) the manner in which the product is to be eaten in order to enhance its flavor; (iv) a two-word germanic-sounding name having an umlaut () over the letter "a"; and, (v) a map of Scandinavia.
Plaintiff concludes that defendants have intentionally packaged their product in a manner calculated to trade upon "plaintiff's unique Scandinavian marketing theme." Transcript at 4-5.
Plaintiff has now moved for a preliminary injunction to prevent defendants' continued use of the allegedly infringing container. A hearing was held before me on May 19, 1980. Based upon the testimony elicited and the evidence received at the hearing, as well as the various memoranda submitted by the parties, the following shall constitute my findings of fact and conclusion of law.
A preliminary injunction will issue only upon a clear showing by the movant that it will suffer irreparable harm absent its issuance and demonstrates either (i) a probability of success on the merits, or (ii) a sufficiently serious question going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the movant. D. C. Comics, Inc. v. Powers, 465 F.Supp. 843, 846 (S.D.N.Y.1978).
Applying these standards to the case at bar, it is apparent that plaintiff has fallen woefully short of entitlement to equitable relief.
Putting aside for the moment the question of irreparable harm, it is evident that there is a serious question as to the merits of plaintiff's claims. The only trademark plaintiff possesses is for the name "Häagen-Dazs." There is no trademark, nor could there be, upon the so-called "unique Scandinavian marketing theme" employed by plaintiff. This is simply a vehicle by which plaintiff has chosen to market its product.
There is no question that the names in issue, Häagen-Dazs and Frusen Glädjé, are clearly distinguishable. It is true that both names contain two words to identify an ice cream product, but so do the names "Louis Sherry" and "Dolly Madison." Plaintiff cannot hope to base its claim of infringement upon such a fortuitous similarity. It is also true that the names in issue seem to be of Swedish origin and, as is appropriate in that language, an umlaut () appears over the letter "a". This, however, is a matter of grammar and not a...
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