Kraft General Foods v. Allied Old English

Decision Date11 June 1993
Docket NumberNo. 93 Civ. 1256 (PKL).,93 Civ. 1256 (PKL).
Citation831 F. Supp. 123
PartiesKRAFT GENERAL FOODS, INC., Plaintiff, v. ALLIED OLD ENGLISH, INC., Defendant.
CourtU.S. District Court — Southern District of New York

COPYRIGHT MATERIAL OMITTED

Darby & Darby, P.C., New York City, (Ethan Horwitz, Alexandra D. Malatestinic, Amy Benjamin Jacka, of counsel), for plaintiff.

Stoll, Miskin, Previto & Hoffman, New York City, (Howard C. Miskin, of counsel), for defendant.

OPINION AND ORDER

LEISURE, District Judge.

This is an action for false designation of origin, trademark and trade dress infringement, unfair competition, and dilution brought pursuant to sections 32(1) and 43(a) of the Lanham Act, 15 U.S.C. §§ 1051 et seq., section 368-d of the New York General Business Law, and New York common law. Plaintiff Kraft General Foods, Inc. ("Kraft") manufactures "Bull's-Eye" barbecue sauce. Kraft alleges that the "Raging Bull" barbecue sauce distributed by defendant Allied Old English, Inc. ("Allied") infringes upon the trademark and trade dress rights subsisting in the "Bull's-Eye" name and packaging.

On April 6, 1993, Kraft brought a motion for a preliminary injunction by way of order to show cause. Kraft argues, in sum, that the defendant's use of the "Raging Bull" product name and the product packaging used in conjunction with that product are likely to cause confusion among the purchasers of barbecue sauces. Among the evidence submitted on Kraft's behalf are the results of a mall intercept survey which, according to Kraft, demonstrates that the defendant's alleged infringement is likely to cause confusion among 26% of the purchasing public. The Court conducted a hearing on April 27, 1993, and the parties subsequently filed supplemental papers. For the following reasons, the motion for a preliminary injunction hereby is granted.

BACKGROUND

Kraft introduced Bull's-Eye barbecue sauce on a regional basis in 1985 and began selling Bull's-Eye nationwide in 1987. Sales have risen to approximately 45 million dollars annually, representing a market share of 9.5% of all barbecue sauce sold. Declaration of Susan Wisner, dated March 2, 1993 ("Wisner Declaration"), ¶ 4. Bull's-Eye is marketed extensively in print advertisements and television commercials. During 1992, Kraft expended approximately five million dollars on print and television advertising for the Bull's-Eye line of products.

Bull's-Eye has been featured in more than twenty-five articles and is consistently rated as the top rated barbecue sauce or among the top three barbecue sauce brands tested. See, e.g., Wisner Declaration, Ex. 1 (Consumer Reports article and other articles). In addition, numerous articles have discussed Kraft's marketing strategy for Bull's-Eye sauce, noting the success of Kraft's methodology. See Wisner Declaration, Ex. 2.

Since its introduction in 1985, Bull's-Eye has been sold in a trade dress incorporating the following elements:

a clear glass bottle with a label having a very dark brown background on the main portion of the bottle, a centered BULL'S-EYE logo1 on the label consisting of a colored bull's head design2 at the top center of the logo, directly below the bull's head appearing the words BULL'S-EYE3 in white, the flavor variety appearing directly below in colored lettering, and the words BIG BOLD TASTE directly below on a colored banner at the bottom center of the logo. The colored portions of the label appear in a single color on each label, and different colors (such as red or green) are used to denote flavor varieties.

Memorandum in Support of Plaintiff's Motion for Preliminary Injunction, at 3-4. Kraft has obtained trademark registrations for the mark BULL'S-EYE, the bull's head design mark used on the product label, and the BULL'S-EYE mark and design viewed together. See Wisner Declaration, ¶ 10 & Exs. 4-6.

Allied began to produce and test market a barbecue sauce product under the name Raging Bull in October 1991. Allied applied for trademark registration of the Raging Bull mark, which application was published for opposition on September 1, 1992. See Declaration of Howard C. Miskin, Esq., dated April 19, 1993, Exs. 6-7. No opposition to the registration of the Raging Bull mark was filed. See id., Ex. 8. Pending acceptance of Allied's Statement of Use, the Raging Bull mark should be registered in due course.

Although Allied knew that Kraft's Bull's-Eye barbecue sauce was on the market, "no one ever mentioned the mark as a source of confusion" because its was not "even considered that `Bull's-Eye' was close." Declaration of Frederick C. Ross, dated April 19, 1993 ("Ross Declaration"), ¶ 5. Rather, Allied was most concerned that the owners of the movie "Raging Bull" might object to Allied's use of the movie title as the name of its barbecue sauce. Id., ¶ 5.4 The Raging Bull packaging includes a sketch of "an angry, excited bull." Id., ¶ 8. The packaging is further described as follows:

It is a single label extending substantially around the bottle. Dark red or burgundy was chosen for the bull's head to play up the "raging" aspect and to denote "power" and "zest". The color of the sauce is dark based on its ingredients, so a dark label background was selected, which is black.

Id., ¶ 8.

Kraft alleges that Allied's use of the Raging Bull mark and the trade dress chosen for Allied's product are likely to cause confusion among the consuming public regarding the identity or origin of each product. Accordingly, Kraft claims that it is continuously and irreparably harmed while the Raging Bull sauce stays on the market in its present marketing form, in violation of the Lanham Act, New York's anti-dilution statute, and New York common law of unfair competition.

DISCUSSION

A party seeking a preliminary injunction "`must demonstrate (1) irreparable harm should the injunction not be granted, and (2) either (a) a likelihood of success on the merits, or (b) sufficiently serious questions going to the merits and a balance of hardships tipping decidedly toward that party....'" King v. Innovation Books, 976 F.2d 824, 828 (2d Cir.1992) (quoting Resolution Trust Corp. v. Elman, 949 F.2d 624, 626 (2d Cir. 1991)); accord Castrol, Inc. v. Quaker State Corp., 977 F.2d 57, 62 (2d Cir.1992); Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir.1988).

The showing of irreparable harm by the moving party must demonstrate more than the mere "possibility" of irreparable harm. Instead, the moving party must demonstrate "that it is likely to suffer irreparable harm if equitable relief is denied." JSG Trading Corp. v. Tray-Wrap, Inc., 917 F.2d 75, 79 (2d Cir.1990). "In trademark cases, a showing of likelihood of confusion as to source or sponsorship establishes the requisite likelihood of success on the merits as well as risk of unreasonable harm." American Cyanamid Co. v. Campagna Per Le Farmacie In Italia, S.P.A., 847 F.2d 53, 55 (2d Cir.1988); see also Western Pub. Co. v. Rose Ad Indus., Inc., 910 F.2d 57, 59 (2d Cir.1990) (irreparable harm established upon a showing that an "appreciable number of ordinarily prudent purchasers are likely to be misled, ... or merely confused, as to the source of the goods"); LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 79 (2d Cir.1985). Moreover, the injury resulting from trademark dilution or unfair competition is similar to a Lanham Act injury in that it is extremely unlikely that the moving party can be fully recompensed by money damages.

The issuance of a preliminary injunction is an extraordinary equitable remedy that should not be granted absent a clear showing that the moving party has met its burden of proof. See Beech-Nut, Inc. v. Warner-Lambert Co., 480 F.2d 801, 803 (2d Cir.1973); Berrigan v. Norton, 451 F.2d 790, 793 (2d Cir.1971). With these basic principles in mind, the Court now turns to the merits of Kraft's application for a preliminary injunction.

I. LANHAM ACT CLAIMS

Plaintiff Kraft has brought causes of action under the Lanham Act for trademark and trade dress infringement, 15 U.S.C. § 11145, and false designation of origin under 15 U.S.C. § 1125(a).6 It is well settled that plaintiff must demonstrate likelihood of confusion in order to succeed on either of these claims under the Lanham Act. Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1074, No. 92-7882, slip op. at 2903 (2d Cir. Apr. 28, 1993); W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 570-71 (2d Cir.1993). Thus, plaintiff must show that "`an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question.'" W.W.W. Pharmaceutical Co., 984 F.2d at 571 (quoting McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir.1979)).7 The Court finds that Kraft has established a likelihood of success on the merits as to the "likelihood of confusion" issue.

A. The Polaroid Factors

In order to determine whether there is a "likelihood of confusion," the Court adheres to the multi-factor test set forth by Judge Friendly in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). In Polaroid, the Second Circuit considered the following factors in assessing likelihood of confusion:

(a) the strength of the prior owner's mark;
(b) the similarity between the two marks;
(c) the competitive proximity of the products;
(d) the likelihood that the prior user will bridge the gap;
(e) actual confusion;
(f) the defendant's good faith;
(g) the quality of defendant's product; and
(h) the sophistication of the buyers.

W.W.W. Pharmaceutical Co., 984 F.2d at 572 (citing Polaroid Corp., 287 F.2d at 495); see also Gruner + Jahr USA Publishing, 991 F.2d at 1077. In applying this test, no single factor is dispositive, but rather the Court should "weigh each factor in the context of the others to determine if, on balance, a likelihood of confusion exists." W.W.W. Pharmaceutical Co., 984 F.2d at...

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