Syndicate Sales v. Hampshire Paper Corp.

Decision Date13 September 1999
Docket NumberNo. 98-4217,98-4217
Citation192 F.3d 633,52 U.S.P.Q.2d 1035
Parties(7th Cir. 1999) SYNDICATE SALES, INCORPORATED, Plaintiff-Appellant, v. HAMPSHIRE PAPER CORPORATION, Defendant-Appellee
CourtU.S. Court of Appeals — Seventh Circuit

Before BAUER, RIPPLE and ROVNER, Circuit Judges.

RIPPLE, Circuit Judge.

Syndicate Sales brought this action against Hampshire Paper Corporation ("Hampshire Paper"), alleging trade dress infringement under the Lanham Act, trade dress dilution under the Federal Trademark Dilution Act, and related state law claims for unfair competition and interference with business relations. The district court granted summary judgment to Hampshire Paper. Syndicate Sales appeals. For the reasons stated in this opinion we affirm in part and reverse in part the judgment of the district court.


Syndicate Sales produces plastic baskets used for floral bouquets at funerals. In 1960, it began offering its "#92" basket. Since that time, it has sold approximately 50 million such baskets. Around the same time, Syndicate Sales also offered its "#95" basket; it has sold about 10 million of these baskets. Syndicate Sales has advertised its baskets through catalogs, flyers, brochures and trade shows.

Hampshire Paper, which was originally a floral paper products company, decided to enter the plastic products market in 1994. It used the Syndicate Sales funeral baskets as a model for its baskets. One of Hampshire Paper's baskets, the "#9200," is similar to Syndicate Sales' #92 basket. The two baskets' teardrop-shaped handles, round buckets and bases with triangle supports are very similar. The lattice work on the handles also appears somewhat similar. However, the lattice work of Syndicate Sales' handles generally takes an oval shape, while the Hampshire Paper lattice work takes the shape of interlocking semi-circles and triangles. Hampshire Paper sells the baskets in boxes of two dozen, just as Syndicate Sales sells its baskets in boxes of two dozen.

Hampshire Paper also produced a "#9500" basket that is similar to Syndicate Sales' "#95" basket. The general flute shape of the baskets, along with the shape of the bases and handles, are similar. However, the lattice work on the handles is not identical. The two types of baskets are each sold in boxes of 18. Hampshire Paper has also begun plans for a "#9100" basket, which will be similar to Syndicate Sales' "#91" basket.

Both companies sell their baskets to wholesalers, who then sell the baskets--still contained in their original boxes--to retailers. Hampshire Paper ships its baskets to wholesalers in brown boxes with Hampshire Paper's name displayed prominently on the box; Syndicate Sales sells its baskets in white boxes with green lettering. Its name is also displayed on its boxes.

Syndicate Sales makes several claims against Hampshire Paper. It alleges that Hampshire Paper has copied its trade dress in violation of sec. 43(a) of the Lanham Act, 15 U.S.C. sec. 1125(a), and the Indiana common law against unfair competition. The district court rejected these claims because it thought that there was no likelihood of confusion as to the source of the baskets. Syndicate Sales also alleges that Hampshire Paper is trading on Syndicate Sales' reputation, thereby diluting its allegedly famous trade dress, in violation of the Federal Trademark Dilution Act, 15 U.S.C. sec.sec. 1125(c) & 1127. The district court rejected this claim by holding that the trade dress was not famous. The district court also rejected Syndicate Sales' claim of interference with business relations because there was no underlying illegal act by Hampshire Paper.

A. Trade Dress

Section 43(a) of the Lanham Act, 15 U.S.C. sec. 1125(a),1 which prohibits infringement of trademarks, also protects trade dress. "'Trade dress' refers to the total image of a product, including features such as 'size, shape, color or color combinations, texture, graphics, or even particular sales techniques.'" Roulo v. Russ Berrie & Co., 886 F.2d 931, 935 (7th Cir. 1989) (quoting John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983)), cert. denied, 493 U.S. 1075 (1990). In this case, Syndicate Sales seeks protection of the configuration of its baskets, which is a form of trade dress.

This court has previously explained how a plaintiff may establish a trade dress claim under sec. 43(a) of the Lanham Act:

In order to prevail on a claim of trade dress infringement, a plaintiff must show that 1) its trade dress is either inherently distinctive or has acquired secondary meaning, and 2) that the similarity of the defendant's trade dress causes a likelihood of confusion on the part of consumers as to the source or affiliation of the products.

Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 291 (7th Cir.), cert. denied, 119 S. Ct. 336 (1998).

We shall focus here on the second of these criteria--the likelihood of confusion regarding the source of the baskets. Our prior case law provides guidance on this issue:

A number of factors must be examined when determining if a likelihood of confusion exists between the trade dresses of two products. These include: 1) the similarity of the trade dresses; 2) the area and manner of concurrent use; 3) the degree of care likely to be used by consumers; 4) the strength of the plaintiff's trade dress; 5) actual confusion; and 6) intent of the defendant to pass off its product as that of the plaintiff . . . . [N]one of these factors considered alone is dispositive, and the weight to be accorded each varies from case to case. When making its inquiry, the court must compare the trade dresses "in light of what happens in the marketplace, not merely by looking at the two . . . side-by-side."

Id. at 296 (quoting Meridian Mutual Ins. Co. v. Meridian Ins. Group, Inc., 128 F.3d 1111, 1115 (7th Cir. 1997)) (citations omitted). Customers who do not care about the source of goods are not considered in the determination whether there is a likelihood of confusion. See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition sec. 23:5, at 23-16 to 23-17 (1999).

Syndicate Sales admits that wholesalers would not be confused as to the source of the boxes of baskets they receive. It contends, however, that retailers would be confused, and that the district court improperly limited its consideration to the wholesale market.2 However, the district court did consider the possibility of retailer confusion. It stated that retailers merely order funeral baskets generically, so that any confusion they have as to source is irrelevant because they are indifferent to the source of the baskets. The district court also noted that confusion is unlikely because the Syndicate Sales baskets and the Hampshire Paper baskets are shipped in distinct boxes (Syndicate Sales' are colored white with green lettering; Hampshire Paper's are colored brown). Moreover, the name of each company is placed prominently on its boxes.

Syndicate Sales does provide limited evidence that some retailers do care about the source of the baskets. However, for those retailers that do care, we believe that the district court correctly held that the packaging differences provide strong evidence against a finding of likelihood of confusion. This and other circuits have considered distinct labeling and packaging as significant factors in determining whether there is a likelihood of confusion. See Dorr- Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 383 (7th Cir. 1996); Libman Co. v. Vining Indus., Inc., 69 F.3d 1360, 1362 (7th Cir. 1995), cert. denied, 517 U.S. 1234 (1996).3 The Third Circuit, noting that the various confusion factors may be accorded varying weight, explained:

In a product configuration trade dress infringement, . . . consumers do not have to rely on a potentially distinctive configuration to identify the source of the product; rather, they can generally look to the packaging, trademarks, and advertising used to market the product, which are typically much less ambiguous. Consumers therefore have less need, and so are much less likely, to rely on a product configuration as an indicator of the product's source. Accordingly, they are less likely to be confused as to the sources of two products with substantially similar configurations. Thus, in trade dress infringement suits where the dress inheres in a product configuration, the primary factors to be considered in assessing likelihood of confusion are the product's labeling, packaging, and advertisements. "The most common and effective means of apprising intending purchasers of the source of goods is a prominent disclosure on the container, package, wrapper, or label of the manufacturer's or trader's name . . . [and when] that is done, there is no basis for a charge of unfair competition." Venn v. Goedert, 319 F.2d 812, 816 (8th Cir. 1963).

Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 203 (3d Cir. 1995); see also Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 259 (5th Cir. 1997).

There are, of course, situations where distinct labeling or packaging of products will not prevent confusion. For example, when little care should be expected by the relevant purchaser, or when the differences in labeling and packaging are not great, then perhaps distinct labeling and packaging will be insufficient. Indeed, in Thomas & Betts, 138 F.3d at 297, we rejected a similar argument because there was evidence that distributors repackaged the product before consumers purchased them. Such a consideration is not relevant to this case; we are not considering confusion among consumers who will never see the packaging and labeling. Instead, we are considering confusion among retailers, who receive the baskets in clearly labeled packages. Moreover, as we have...

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