Packerware Corp. v. Corning Consumer Products Co.
| Citation | 895 F. Supp. 1438 |
| Decision Date | 14 July 1995 |
| Docket Number | Civ. A. No. 95-2153-EEO. |
| Parties | PACKERWARE CORPORATION, Plaintiff, v. CORNING CONSUMER PRODUCTS COMPANY, Defendant. |
| Court | U.S. District Court — District of Kansas |
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Richard R. Johnson, Devon A. Rolf, Kokjer, Kircher, Bowman & Johnson, Kansas City, MO, for plaintiff.
Thomas H. Van Hoozer, Robert D. Hovey, Hovey, Williams, Timmons & Collins, Kansas City, MO, Marie V. Driscoll, Robin, Blecker, Daley & Driscoll, New York City, for defendant.
This matter is before the court on plaintiff's application for preliminary injunction (Doc. # 5). Plaintiff PackerWare Corporation filed this action against defendant Corning Consumer Products Company claiming trademark infringement. Plaintiff seeks to enjoin defendant from using the term "Casual Elegance" with its new product line. After carefully considering the parties' briefs, oral arguments, testimony at the hearing, and exhibits, the court makes the following findings of facts and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a).
1. Plaintiff, PackerWare Corporation (hereinafter plaintiff or PackerWare), is a Kansas corporation with its principal place of business in Lawrence, Kansas. It was formerly known as Packer Plastics Incorporated.
2. Corning Consumer Products Company (hereinafter defendant or Corning) is a Delaware corporation with its principal place of business in Corning, New York.
3. The plaintiff is in the business of manufacturing and selling articles made of plastic. Until 1991, when plaintiff decided to develop a retail line, its business was primarily the manufacture of plastic containers used by the food industry for packaging dairy products such as margarine, yogurt, and Cool Whip. It has also manufactured printed cups which are sold to consumers, primarily at athletic events.
4. Corning Consumer Products Company is a wholly-owned subsidiary of Corning Incorporated, which is a leading manufacturer and distributor of products made of glass and other materials for industrial, scientific, and household use. The Corning Consumer Products subsidiary was formed to sell cookware, which is identified by brands such as Corning, Corelle, Corning Ware, Pyrex, Visions and Revere.
5. In 1991, PackerWare decided to develop a retail line, which was to include brightly colored plastic pitchers, cups, tumblers, plates, and bowls. Prior to 1991, the plaintiff had not focused on retail products. PackerWare named its new line "Casual Elegance."
6. On December 1, 1992, PackerWare registered Casual Elegance as a trademark in the United States Patent and Trademark Office, under Registration No. 1,737,656. The goods covered by the registration are "plastic dinnerware."
7. The PackerWare Casual Elegance product line includes tumblers, bowls, plates, and pitchers, which are all made of plastic. Items such as tumblers, bowls, and plates are available at retail stores in shrink wrap sets.
8. A PackerWare 1995 Price List indicates that the sets of PackerWare Casual Elegance tumblers are priced from $0.78 to $1.32 per set; pitchers are listed at $1.69, fluted bowls are priced at $1.16 and $1.62 per set, and fluted plates are priced at $2.02 for a set of four. James Schwartzburg, PackerWare's chief executive officer, testified that a set of three tumblers retails at approximately $1.
9. The PackerWare plastic products are sold primarily in retail stores of mass merchandisers such as Wal-Mart and Family Dollar.
10. One of the marketing objectives listed in the PackerWare Marketing Plan is "to tie Casual Elegance to the PackerWare name, capitalizing on the strength and reputation of PackerWare for top quality, value-added merchandise."
11. James H. Schwartzburg, founder and chief executive officer of PackerWare, testified that it is the goal of the company to use the PackerWare name wherever possible in connection with the PackerWare product. He also testified that the marketing objective of tying Casual Elegance to the PackerWare name was being carried into effect.
12. No consumer print advertisements for the PackerWare Casual Elegance line were introduced into evidence, and Mr. Schwartzburg could not recall whether such advertisements had ever been placed.
13. Bruce Sims, Vice-President, Sales, of PackerWare, first learned of PackerWare's Casual Elegance product line in 1993, when he was approached by someone from PackerWare regarding a possible job opportunity with the company. Prior to meeting with PackerWare, Sims had never heard of the Casual Elegance product, although he had been employed in the plastics industry for approximately seven years.
14. In the past, sets of tumblers have been by far the largest selling items in the PackerWare line. For example, in 1993, tumblers accounted for over $800,000 of some $946,000 in total sales. In 1994, tumblers accounted for approximately $1,068,000 of some $1,349,000 in total sales. Items such as plates have had very small sales, with only $2,066 sold in 1993, and $368 in 1994.
15. Between 1992 and 1993, sales of PackerWare Casual Elegance products dropped significantly because the plaintiff experienced manufacturing problems with the molds.
16. Prototypes of a plastic salad bowl set and a plastic pitcher and tumbler set were made, but these products have not been sold because of production problems with the packaging. PackerWare has also experienced problems with the mold for plates.
17. Schwartzburg testified that PackerWare originally intended to extend its Casual Elegance line into new types of products other than plastic, such as tablecloths, ceramics, and stoneware. PackerWare, however, has not in fact begun to sell such products in the four years since the Casual Elegance line was introduced. Mr. Schwartzburg could not recall what, if anything, PackerWare had ever sold in any product line that was not made of plastic.
18. Schwartzburg admitted that he was unable to show any lost sales of PackerWare Casual Elegance products attributable to Corning. He also admitted that PackerWare's product is not a substitute for Corning's products made of Pyroceram glass ceramic.
19. The Corning cookware at issue in this proceeding is made of Pyroceram, a unique glass-ceramic material, which is highly resistant to breakage and temperature extremes. Corning Incorporated invented the material in 1956 for use in the nose cones of guided missiles.
20. The Pyroceram material subsequently was adapted to a line of commercial cooking and serving vessels introduced to the public in 1958 under the trademark Corning Ware. The Corning Ware cookware has been a successful product line, with sales since 1958 exceeding $1.9 billion. Defendant has spent over $100 million in advertising and promotion. More than 440,000,000 pieces of Corning Ware has been sold since its introduction.
21. Corning Ware cookware is the leader in market share in the oven cookware category. Market research indicates that 72% of the households in this country own Corning Ware products, and that 91% of those owners are extremely or very satisfied with them. Market research also shows that the Corning Ware trademark has a high consumer awareness of 98%. Schwartzburg has admitted that the Corning Ware trademark is "definitely" well known.
22. This action concerns use by Corning of the term Casual Elegance on a new style of Corning Ware cookware and serveware. Corning Ware had previously been available in two styles, its original, traditional version called A-line and a classic style added later which Corning calls French White. In the mid-1980's, Corning introduced to the Pyrex line of bakeware and serveware a style called Clear Elegance. Sales of Clear Elegance have exceeded $8.7 million. From approximately 1987 to 1988, Corning also sold a line of Corning Ware cookware under the style name Classic Elegance. Sales of Classic Elegance products exceeded $5.5 million. Corning has generated significant revenues through the sales of products associated with the concept of "elegance."
23. Corning Ware has been generally considered a product of traditional styling, quality, and durability. Members of the trade had begun to feel that Corning was not responsive to current customer trends. Corning decided to update its image and meet these concerns of the trade by adding a new style designed to appeal to younger customers with more ethnic diversity. Corning decided that, in keeping with the lifestyle enjoyed by the targeted customers, the style would be called Casual Elegance.
24. The new line features new shapes for the cookware, with wider rims, floral embossing, and an ergonomically designed glass cover for easy gripping.
25. The cookware in the new style is manufactured from Corning's unique Pyroceram material. Corning advertising and promotional materials emphasize that the product can withstand extreme changes of temperature, with the capability to go from the cold of a refrigerator or freezer to the heat of an oven or stove top without breaking. Advertising and promotional material also emphasize the Corning and Corning Ware names.
26. The name Corning or Corning Ware appears on each product in the line. The words "Casual Elegance" also appear on all the packaging. Although the plaintiff introduced a document at the hearing showing line drawings of defendant's product referring only to Casual Elegance and not the name Corning or Corning Ware, the document was an internal document only, and not distributed to the trade or given to consumers.
27. In connection with the introduction of the new product to the trade, Corning emphasized its heritage by associating the Casual Elegance line with other Corning brands such as Corning, Corelle Corning Ware, Pyrex, Visions, and Revere. This association with previous Corning products was also made on the back of the packaging of the Casual Elegance...
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