Stern's Miracle-Gro v. Shark Products
| Decision Date | 16 February 1993 |
| Docket Number | No. 92 Civ. 9307 (PKL).,92 Civ. 9307 (PKL). |
| Citation | 27 USPQ 2d 1267,823 F. Supp. 1077 |
| Parties | STERN'S MIRACLE-GRO PRODUCTS, INC., Plaintiff, v. SHARK PRODUCTS, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
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Abelman, Frayne & Schwab, New York City (Lawrence E. Abelman, Jeffrey A. Schwab, Norman S. Beier, Michael Aschen, of counsel), for plaintiff.
Steinberg & Raskin, New York City (Martin G. Raskin, of counsel), for defendant.
This is an action for trademark infringement, false designation of origin, dilution and unfair competition. Plaintiff Stern's Miracle-Gro Products, Inc. ("Stern's"), producer of plant fertilizer products, has moved for a preliminary injunction prohibiting defendant Shark Products, Inc. ("Shark") from infringing upon plaintiff's mark by marketing certain hair care products under the Miracle-Gro trademark. For the reasons stated below, the motion for a preliminary injunction is granted.
Plaintiff Stern's markets a water soluble multi-purpose plant food under the trademark "Miracle-Gro." According to the complaint, Stern's predecessor in interest introduced this innovative water soluble plant fertilizer in 1951 and the product has been continuously sold and distributed in the United States since that time. Complaint, dated December 28, 1992, at ¶¶ 9, 10. Stern's licensor, Stern's Nurseries, Inc., is the owner of all rights to the federal trademark registration for the Miracle-Gro mark which issued on October 28, 1958 and is valid and subsisting. Complaint, at ¶ 11.
Stern's claims to be the premier retailer of water soluble fertilizers for home lawn and garden use in the United States. Complaint, at ¶ 9. It attributes the success of Miracle-Gro, in part, to its complete water solubility. According to Stern's, a home gardener can produce a gallon of liquid plant food simply by dissolving a tablespoon of Miracle-Gro powdered crystals into a gallon of clean water. Declaration of John Kenlon, dated December 23, 1992 ("Kenlon Declaration"), at ¶ 7. In addition, Stern's claims that, unlike traditional dry granular plant foods, Miracle-Gro can be applied safely during hot, dry spells without fear of plant fertilizer "burn." Kenlon Declaration, at ¶ 9. Moreover, Stern's states that its product starts to work within minutes of application and will lead almost immediately to spectacular results—bigger flowers, more color, more fruits and vegetables. Kenlon Declaration, at ¶ 9.
Plaintiff has extensively distributed advertising, promotional and informational materials throughout the United States which identify the Miracle-Gro brand fertilizer, including print and national television and radio campaigns. Complaint, at ¶ 12. In addition, plaintiff's nationally distributed fertilizer packaging prominently bears the Miracle-Gro trademark. Complaint, at ¶ 12. Miracle-Gro brand plant food is sold in more than 40,000 retail stores in the United States. Kenlon Declaration, at ¶ 19.
Defendant Shark, a New York corporation, is a manufacturer and wholesale distributor of hair care products which are directed to the African ethnic community. Declaration of Brian K. Marks, dated January 13, 1993 ("Marks Declaration"), at ¶¶ 3, 5. Shark was incorporated in April, 1991 and in September, 1991 began selling a line of four ethnic hair care products under the African Pride trademark, including a hair, scalp and skin oil product, a leave-in tonic, an herbal hair conditioner, and an oil hair conditioner. In early 1992, Shark added two additional products to its African Pride line, namely a braid sheen spray and a hair and scalp spray. Shark recently has added a shampoo and conditioner to its African Pride line. Marks Declaration, at ¶¶ 5-9.1
Shark is the subject of this action because it distributes two hair care products, the herbal and oil hair conditioners, in packaging bearing the indicia "Miracle Gro." The "Miracle Gro" mark is prominently displayed on the products' labelling, along with reference to Shark's African-Pride trademark. See Marks Declaration, at Exhibit A.
Stern's filed this action on December 28, 1992, alleging that defendant has undertaken a concerted plan to trade upon plaintiff's reputation and goodwill by means of appropriating and infringing plaintiff's Miracle-Gro trademark and thereby causing public confusion as to the source, sponsorship or affiliation of its products, diluting the distinctive quality of plaintiff's unique and distinctive trademark, and causing injury to plaintiff's business reputation. Complaint, at ¶ 15.
The complaint seeks injunctive relief and damages under several causes of action including: (1) infringement of the registered Miracle-Gro trademark in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114(1); (2) false designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) unlawful dilution of the distinctive quality of Stern's trademark and injury to Stern's business reputation under New York General Business Law Section 368-d; and (4) unfair competition under New York common law.
On December 28, 1992, Stern's moved for a preliminary injunction, pursuant to Rule 65 of the Federal Rules of Civil Procedure, enjoining defendant from engaging in the infringing activity. The Court held a hearing on January 19, 1993, at which time the parties presented oral argument on plaintiff's application for an injunction. At the hearing, Stern's requested an opportunity to reply in writing to Shark's opposition papers. The Court granted this request and, on January 26, 1993, Stern's reply papers were submitted. Since Stern's submitted a consumer survey in its reply papers, the Court granted Shark's request to file a sur-reply. The sur-reply was filed on February 1, 1993, and the motion is now fully submitted.
Accordingly, the Court has received extensive papers from both sides addressing the facts and the law as applicable to this matter, as well as oral argument. The Court does not believe that any additional proof is necessary to resolve the present application, and neither party has requested an opportunity to submit any additional proof.
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, A Division of Innovative Corp., 976 F.2d 824, 828 (2d Cir. 1992) (quoting Resolution Trust Corp. v. Elman, 949 F.2d 624, 626 (2d Cir.1991)); Castrol, Inc. v. Quaker State Corp., 977 F.2d 57, 62 (2d Cir.1992); Coca-Cola Co. v. Tropicana Products, Inc., 690 F.2d 312, 314-15 (2d Cir. 1982).
The issuance of a preliminary injunction is an extraordinary equitable remedy which 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 the preliminary injunction application in this case.
Plaintiff Stern's has brought causes of action under the Lanham Act for trademark infringement, 15 U.S.C. § 11142, and false designation of origin under 15 U.S.C. § 1125(a)3. It is well-settled that plaintiff must demonstrate likelihood of confusion in order to succeed on either of these claims under the Lanham Act. 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.'" Id. (quoting McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir.1979)).4 The Court finds that plaintiff has established a likelihood of success on the merits as to the "likelihood of confusion" issue with respect to the Lanham Act claims.
In order to make this "likelihood of confusion" determination, the Court adheres to the multi-factor test set forth by Judge Friendly in 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). In Polaroid, the Second Circuit considered the following factors in assessing likelihood of confusion:
W.W.W. Pharmaceutical Co., 984 F.2d at 572 (citing Polaroid Corp., 287 F.2d at 495). 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 572; Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1004 (2d Cir.1983).
(1) Strength of the Mark
The "strength of the mark" analysis focuses on "`the distinctiveness of the mark, or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous source.'" W.W.W. Pharmaceutical Co., 984 F.2d at 572 (quoting McGregor-Doniger, Inc., 599 F.2d at 1131); Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 491 (2d Cir.1988); Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1225 (2d Cir.1987). A mark's strength is measured by two factors: "(1) the degree to which it is inherently distinctive; and (2) the degree to which it is distinctive in the marketplace."...
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