STORCK USA, LP v. Farley Candy Co., Inc.

• Decision Date: 31 January 1992
• Docket Number: No. 92 C 0552.,92 C 0552.
• Parties: STORCK USA, L.P. and August Storck K.G., Plaintiffs, v. FARLEY CANDY COMPANY, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

785 F. Supp. 730

STORCK USA, L.P. and August Storck K.G., Plaintiffs, v. FARLEY CANDY COMPANY, INC., Defendant.

No. 92 C 0552.

United States District Court, N.D. Illinois, E.D.

January 31, 1992.

Larry L. Saret, Joseph F. Schmidt, John T. Gabrielides, Laff, Whitesel, Conte & Saret, Chicago, Ill., for plaintiffs.

James Dominick Adducci, Jeffrey Edward Schiller, Schuyler, Roche & Zwirner, Chicago, Ill., Alan S. Cooper, Banner, Birch, McKie & Beckett, Washington, D.C., for defendant.

MEMORANDUM OPINION AND ORDER

HOLDERMAN, District Judge:

Plaintiffs Storck USA, L.P. and August Storck K.G. ("Storck") have moved the court for a preliminary injunction enjoining defendant Farley Candy Co. ("Farley") from using any trade dress or trademark which is confusingly similar to the package used by Storck for its Werther's Original candy.

FACTS

Since 1980, Storck has continuously distributed Werther's Original packaged hard butter toffee candy. From 1980 to 1988, the 8-ounce bag in which Werther's Original butter toffee candy was sold had a brown background, a picture of a mound of unwrapped candy on the front and back panels, and a design of an Alpine village and an old-fashioned container pouring a white liquid. (Harshman Declaration, Ex. 1.)

In May 1988, Storck revised its Werther's Original package by using a 7-ounce bag, changing the background color of the bag to blond, and by revising and expanding the village design. The village design was changed from a picture of a single container pouring white liquid to a picture of two pitchers pouring white liquid into a merged stream. The Village Design¹ prominently shows in the foreground two brown and orange pitchers pouring their white liquid contents into a merged stream. In the background of the Village Design is a "pastoral" image of a blue sky, green grass, flowers, a mountain range, and an Alpine village. The entire design is roughly oval in shape and is positioned in the left center portion of the front panel. The lower third of the front panel is a picture of a mound of the unwrapped butter toffee candy. The mound of candy extends around to the back panel where it is interrupted by a clear window which reveals the candy pieces inside the package individually wrapped in gold-colored foil. (See Pl.Ex. 1.)

Defendant Farley's package for its butter toffee candy is a bag in the same size (7 ounces) and in the same shape (rectangular) as the bag for Storck's Werther's Original butter toffee candy. (Pl.Ex. 2.) A design on the left center portion of the front panel of Farley's butter toffee package depicts a pair of containers, one orange and one brown, pouring their creamy liquid contents into a merged stream onto a mound of unwrapped candy positioned on the lower left portion of the front panel. The pouring containers are set against a green and blue background. The design is oval in shape. The background of Farley's bag is light yellow. A clear window in the lower right-hand corner of the front panel of the package displays the candy inside the bag individually wrapped with gold-colored foil.² (See Pl.Ex. 2.)

DISCUSSION

Before a preliminary injunction will issue, the movant must show, as a threshold matter, that: (1) they have no adequate remedy at law; (2) they will suffer irreparable harm if the injunction is not granted; and (3) they have some likelihood of success on the merits in the sense that their chances are better than negligible. Thornton v. Barnes, 890 F.2d 1380, 1384 (7th Cir.1989) (emphasis in original). If the movant can meet this threshold burden, the inquiry then becomes a "sliding scale" analysis of the harm to the parties and the public from the grant or denial of the injunction and the actual likelihood of success on the merits. Id. In particular, and keeping in mind that the public interest may become important in a given case, the more likely the plaintiff is to win, the less heavily need the balance of harms weigh in his favor in order to get the injunction; the less likely he is to win, the more need it weigh in his favor. Id. See National People's Action v. Village of Wilmette, 914 F.2d 1008, 1010-11 (7th Cir.1990).

I. LIKELIHOOD OF SUCCESS ON THE MERITS

Storck has brought its allegations under several legal theories. Because the court finds that Storck has established some likelihood of success on the merits with respect to its Lanham Act claim, and is entitled to a preliminary injunction on that basis alone, the court need not and does not address in this opinion Storck's likelihood of success on its other claims.

"Trade dress" refers to the total image of a product, including features such as size, shape, color or color combinations, texture, graphics, or other visual features. Roulo v. Russ Berrie & Co., 886 F.2d 931, 935-36 (7th Cir.1989). An infringement of trade dress is proven if: (1) the plaintiff's trade dress is inherently distinctive or has acquired secondary meaning, (2) the plaintiff's trade dress is primarily nonfunctional, and (3) the defendant's trade dress is confusingly similar, engendering a likelihood of confusion in the marketplace. Id.

The court is persuaded that Storck is likely to succeed in establishing that the Village Design, including the pouring pitchers scene, is distinctive and arbitrary. It is undisputed that the background Alpine scene is arbitrary. (Def.Mem. in Opp., p. 7.) While the image of cream may be considered descriptive of an ingredient in the candy, see A.J. Canfield Co. v. Vess Beverages, Inc., 796 F.2d 903, 906-07 (7th Cir.1986) (indication of ingredients is merely descriptive), the embellished image of the cream pouring out of two old-fashioned pitchers into a merged stream serves no descriptive or otherwise functional purpose.

Farley attempts to undermine the claims of distinctiveness of the pouring pitchers image within Storck's Village Design by providing several examples of other food products which display a liquid, usually milk or cream, being poured from a container. (Def.Ex. 7-10.) All the examples provided are obviously distinguishable from the scenes displayed on the packages of Storck's and Farley's butter toffee candy. One of the products shows an upright wooden bucket of milk. (Def.Ex. 9.) There is no image of pouring on this package whatsoever. The other packages introduced by Farley show only one container pouring a liquid, and not two containers pouring liquid into a common stream. (Def.Ex. 7, 8, 10.) On two of the packages, the container which is pouring a liquid is presented by a photograph, and not a drawing, of a modern, and not an old-fashioned, pitcher. (Def.Ex. 7, 8.)

None of these products undermine in any way the distinctiveness of the pouring pitchers image on the Storck butter toffee candy package. The court holds that the Village Design, including the pouring pitchers image, is inherently distinctive, see Roulo, 886 F.2d at 937 (secondary meaning is not necessary where the trade dress is distinctive), and serves no functional purpose.

Other aspects of Storck's Werther's Original package are not distinctive or are functional and do not warrant the same protection as a distinctive, nonfunctional trade dress. The blond packaging of Werther's Original is descriptive or at least highly suggestive of the candy which it contains. Also, numerous other candy manufacturers use yellow or blond as the color of their packages. (See Def.Ex. 12.) Except for its across-the-bottom presentation,³ the picture of the unwrapped butter toffee candy on the front and back panels of the Werther's Original package is highly descriptive of the candy product itself. Therefore, the court does not find that the blond color or the picture of the unwrapped candy on the Werther's Original package is arbitrary or otherwise distinctive. The window on the back panel of the Werther's Original package is functional since it serves to display the product to the consumer. No secondary meaning has been established for these elements of the Werther's Original trade dress.

Storck must now establish that the distinctive elements of Farley's trade dress are sufficiently similar to create the likelihood of confusion between the two butter toffee candy products. Since the court has found that the Village Design is the only distinctive element of the Werther's Original trade dress, the court will limit its discussion to the likelihood of confusion caused by the similarity of the Farley's Butter and Cream Design to the Werther's Original Village Design.

In assessing the likelihood of marketplace confusion, the factors to be considered include the similarity of the respective trade dresses, the products to which the trade dresses are attached, the area and manner of concurrent use, the degree of care likely to be exercised by consumers, the strength of plaintiff's trade dress, actual confusion, and intent on the part of the alleged infringer to pass off the infringer's goods as those of the plaintiff. Roulo, 886 F.2d at 937.

To properly evaluate the similarity issue, the court must compare the marks in light of what occurs in the marketplace, and not the courtroom. James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 275 (7th Cir.1976). Where the trade dress relates to the same products which are sold side by side in retail channels, a direct visual comparison is appropriate. Roulo, 886 F.2d at 937.

The court does not find that all aspects of Farley's Butter and Cream Design are confusingly similar to Storck's distinctive Village Design. Specifically, the court finds that the only element of the Farley package which by itself is likely to cause confusion is the image in the oval design of the two containers pouring liquid into a common stream. The milk can and butter churn presented on a muted green and blue background absent the two pouring containers would not be confusingly similar to Storck's Village Design.⁴ The only similarity in the respective packages' backgrounds is the green...