Playtex Products v. First Quality Hygienic, 96 CV 5656 (TCP).

• Decision Date: 31 December 1996
• Docket Number: No. 96 CV 5656 (TCP).,96 CV 5656 (TCP).
• Citation: 965 F.Supp. 339
• Parties: PLAYTEX PRODUCTS, INC., Plaintiff, v. FIRST QUALITY HYGIENIC, INC., Defendant.
• Court: U.S. District Court — Eastern District of New York

Page 339

965 F.Supp. 339

PLAYTEX PRODUCTS, INC., Plaintiff, v. FIRST QUALITY HYGIENIC, INC., Defendant.

No. 96 CV 5656 (TCP).

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

December 31, 1996.

Nancy J. Mertzel, Jeffrey A. Schwab, Abelman Frayne & Schwab, New York City, for Playtex Products, Inc.

James W. Badie, Stoll, Miskin, Previto, Hoffman & Badie, New York City, for First Quality Hygienic, Inc.

PLATT, District Judge.

Plaintiff Playtex Products, Inc. ("Playtex"), by Order to Show Cause filed 22 November 1996, seeks a preliminary injunction enjoining defendant First Quality Hygienic, Inc. ("First Quality") from selling tampons competitive with those sold by Playtex. Specifically, First Quality has announced publicly its intention to sell, and has begun advertising, tampons under the trade name "Gentle Touch." Playtex asserts that use of "Gentle Touch" will cause consumers to confuse First Quality's tampons with Playtex's "Gentle Glide" tampons, will constitute use of false designations of origin, will dilute the distinctive quality of the "Gentle Glide" mark, all in violation of the Lanham Act, and will violate the common law prohibition against unfair competition. Playtex asserts that it is entitled to a preliminary injunction because it is likely to succeed on the merits and First Quality's intended use will cause it immediate and irreparable injury.

BACKGROUND

Playtex is the second largest tampon manufacturer in the United States. Its best selling products are sold under its "Gentle Glide" trademark. Playtex coined that mark in 1973 for use with its dome-tipped applicator products. Playtex has used the mark continuously since that time and has sold billions of dollars worth of products under the mark. Playtex registered the "Gentle Glide" mark for "tampon applicators sold as a unit with tampons" on 6 May 1975, and renewed that registration on 29 August 1995. (Ex. 2 to Dores Decl.) Current packaging indicates that Playtex's dome-tipped tampons and their applicators have come to be associated with the "Gentle Glide" mark.

Playtex has expended the following sums to promote public awareness of the "Gentle Glide" mark and the tampon products associated with the mark: for 1990 through 1995, over twenty-five million dollars in advertising; for 1995 alone, over five million dollars; and projected for 1996, over eleven million dollars. (Dores Decl. at ¶ 14.) Playtex has derived over two billion dollars in sales of tampons under the mark. (Dores Decl. at ¶ 15.)

First Quality, which manufactures and sells Femtex branded tampons, plans to introduce rounded-tip paper applicator tampons under the "Gentle Touch" mark. (Damaghi Decl. at ¶ 2.) A trademark search First Quality ordered prior to adopting the "Gentle Touch" mark revealed a number of registrations for "Gentle Touch" for a variety of goods other than tampons — from hair care products to furniture — as well as a number of registrations using the word "Touch" alone or in conjunction with another word. (See Ex. A to Damaghi Decl.) On 15 October 1996, First Quality filed an application with the United States Patent and Trademark Office to register the "Gentle Touch" mark for use with tampon paper applicators.

First Quality's "Gentle Touch" tampons apparently will be carried by retailers who already sell Playtex's "Gentle Glide" products. (Dores Decl. at ¶ 18.) Tampons generally are an inexpensive product, with retail prices ranging from $2.99 to $4.50 for a box of twenty. Few boxes of any size sell for more than $6.00. (Dores Decl. at ¶ 7.)

DISCUSSION

Preliminary injunctive relief is warranted when the moving party can establish both irreparable harm and either a likelihood of success on the merits or sufficient questions on the merits to "make them a fair ground for litigation and a balance of hardships tipping decidedly" in the movant's favor. Warner-Lambert Co. v. Northside Dev. Corp., 86 F.3d 3, 6 (2d Cir.1996) (citation omitted).

The Lanham Act provides that an action for trademark infringement will lie where a person intends to use in commerce a colorable imitation of the registered mark of another without their consent and "such use is likely to cause confusion." 15 U.S.C. § 1114(1)(b). Thus, the critical issue in any trademark action is "whether there is any likelihood 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." Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112, 115 (2d Cir.1984) (quoting Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir.1978)).

Though likelihood of confusion has been found as a matter of law where there is great similarity of marks and close proximity of products, the propriety of injunctive relief may not turn on these factors alone. Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 966 (2d Cir.1981). Rather, even where marks are similar and products proximate, each of a number of additional factors must be analyzed to determine likelihood of confusion. Those factors, which have come to be known as the Polaroid factors, are as follows: (1) strength of the senior mark; (2) degree of similarity between the two marks; (3) proximity of the products; (4) likelihood of bridging the gap; (5) actual confusion; (6) defendant's good faith in adopting its mark; (7) quality of defendant's product; and (8) buyer sophistication. Polaroid Corp. v. Polarad Elecs Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). No factor is dispositive, "nor can the presence or absence of one determine ... the outcome of an infringement suit." Lever Bros. Co. v. American Bakeries Co., 693 F.2d 251, 253 (2d Cir.1982).

I. Strength of the Mark

A trademark's "strength" is assessed based upon its "tendency to identify the goods sold under the mark as emanating from a particular ... source." Lever Bros., 693 F.2d at 256 (citation omitted). Courts utilize several terms of art to define the spectrum of trademark strength: "arbitrary" marks, which employ common words in unfamiliar ways, are entitled to the greatest protection, Lever Bros., 693 F.2d at 256; "suggestive" marks, which "require[] imagination, thought and perception to reach a conclusion as to the nature of the goods," Id. at 256 n. 7, are next on the spectrum; "descriptive" marks, which convey an "immediate idea" of the nature of the product, Id., are next; and "generic" marks, which have come to define an entire product category, Id., fall a distant last on the strength spectrum. Though "an amorphous concept," trademark strength can be analyzed best in the commercial context in which the products at issue compete. See Id. at 257 (citing McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1133 (2d Cir.1979)).

The Court finds that Playtex's "Gentle Glide" mark is suggestive, and therefore a fairly strong mark entitled to substantial protection. Divorcing the mark from its product, "Gentle Glide" does not connote or describe tampons; imagination is required to make the connection. Though the mark may describe attributes Playtex would have the public ascribe to its tampons — that they are indeed gentle to use and easy to insert — it is not descriptive of the substance of the product itself. First Quality's contention that the mark has no strength independent of the Playtex name is meritless.

The finding that "Gentle Glide" is a strong mark entitled to substantial protection is bolstered by its history. Significant advertising expenditures, long and exclusive use, and substantial sales success all support an inference that a mark has acquired "secondary meaning" in the eyes of the buying public. See Centaur Communications v. A/S/M Communications, 830 F.2d 1217, 1222 (2d Cir.1987). Playtex has employed the "Gentle Glide" mark continuously for the nearly twenty-four years since it coined the mark in 1973. Playtex has spent in excess of twenty-five million dollars in advertising for "Gentle Glide" tampons over the last five years, and has derived over two billion dollars in sales over the life of the product. Such facts support the inference that "Gentle Glide" is a strong mark with powerful "`origin-indicating' quality[] in the eyes of the purchasing public." Lever Bros., 693 F.2d at 256 (citation omitted).

First Quality argues that the strength of the "Gentle Glide" mark is diminished by the number of third party registrations revealed in its trademark search. Though a mark's distinctiveness may be diluted by third party use, Lever Bros., 693 F.2d at 256, First Quality has submitted no evidence to support the claim that the "Gentle Glide" mark's distinctiveness in fact has been diluted by third party use of similar marks on other, unrelated products. Use of the mark "Gentle Touch" on "sanitary napkins" might offer some support for First Quality's thesis, but that use was abandoned 10 December 1984 after a 7 February 1983 filing. (See Trademark Search Report attached to Damaghi Decl. at 6.) Use of "Gentle Touch" on products as disparate as "natural wood pellets for use as animal bedding," (Id. at 14), and "video tapes for teaching infant massage," (Id. at 23), cannot, without more, be deemed to dilute the distinctiveness of Playtex's mark.

II. Degree of Similarity Between the Two Marks

Degree of similarity turns on the "general impression" conveyed to prospective purchasers by each mark. C.L.A.S.S. Promotions, Inc. v. D.S. Magazines, Inc., 753 F.2d 14, 18 (2d Cir.1985); see Lever Bros., 693 F.2d at 257. Among the features likely to have an impact on the impulses and memories of the buying public are size, layout, design, and logotype of the two titles, C.L.A.S.S. Promotions, 753 F.2d at 18, as well as overall packaging context. Lever Bros,, 693 F.2d at 257. Proximity of a mark to the "primary" mark of a company name may not be relied upon to distinguish two otherwise similar marks.¹ Burton-Dixie Corp. v. Restonic...