Turtle Wax, Inc. v. First Brands Corp.

• Citation: 781 F. Supp. 1314,22 USPQ 2d 1013
• Decision Date: 27 December 1991
• Docket Number: No. 90 C 5999.,90 C 5999.
• Parties: TURTLE WAX, INC., Plaintiff, v. FIRST BRANDS CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Illinois

781 F. Supp. 1314

22 USPQ 2d 1013

TURTLE WAX, INC., Plaintiff, v. FIRST BRANDS CORPORATION, Defendant.

No. 90 C 5999.

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

December 27, 1991.

J. Patrick Herald, Philip J. Zadeik, William Lynch Schaller, Baker & McKenzie, Chicago, Ill., for plaintiff.

Jack C. Berenzweig, Jerome Gilson, Thomas Michael O'Malley, Thomas Alan Schmidt, Willian, Brinks, Olds, Hofer, Gilson & Lione, Chicago, Ill., for defendant.

MEMORANDUM OPINION AND ORDER

ILANA DIAMOND ROVNER, District Judge.

I. INTRODUCTION

This is an action brought by plaintiff Turtle Wax, Inc. ("Turtle Wax") against its competitor First Brands Corporation ("First Brands") for trade dress infringement pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), the Illinois Deceptive Trade Practices Act, Ill.Rev.Stat. ch. 121½, ¶¶ 312 et seq., the Illinois Consumer Fraud and Deceptive Business Practices Act, Ill.Rev.Stat. ch. 121½, ¶¶ 261 et seq., and the Illinois common law of unfair competition and trademark infringement. At issue are the trade dresses¹ of two competing, super-premium automobile polishes, one manufactured and sold by Turtle Wax and the other by defendant First Brands. The gravamen of plaintiff's complaint is that defendant's trade dress for its "Simoniz Ultimate" car wax infringes upon plaintiff's trade dress for its "Liquid Crystal" automobile polish.

In conjunction with its complaint, Turtle Wax also filed a motion for a preliminary injunction, requesting that defendant be restrained from utilizing the Simoniz Ultimate trade dress or any other colorable imitation of plaintiff's Liquid Crystal trade dress prior to a resolution of the merits of plaintiff's complaint. The Court granted plaintiff's request for expedited discovery and referred the preliminary injunction motion to Magistrate-Judge Ronald A. Guzman for an evidentiary hearing and a report and recommendation. The Magistrate-Judge conducted such a hearing from December 17 through December 21, 1990, and he issued his Report and Recommendation (the "Report") on March 28, 1991.² In that Report, Magistrate-Judge Guzman recommended that the Court deny plaintiff's motion for a preliminary injunction because Turtle Wax had failed to establish a likelihood of success on the merits of its trade dress claims. Pending before the Court are plaintiff's extensive objections to the Report of the Magistrate-Judge. For the reasons enumerated below, the Court will overrule those objections, will adopt the Report of Magistrate-Judge Guzman, and will deny plaintiff's motion for a preliminary injunction.

II. FACTS

This case involves the trade dress of a premium automobile polish manufactured and sold by Turtle Wax under the trade name Liquid Crystal. Plaintiff markets and sells the Liquid Crystal product in two forms — as a polish, which is packaged in an upright "F-style" can, and as a cream or paste in a shorter, round can. (See Antweiler Physical Exhibit R, attached to this opinion as Appendix B.) Turtle Wax designed the Liquid Crystal trade dress with a glossy, black background, gold lettering, and red details. The front end of a gold Porshe is depicted on the package. Both the F-style and paste cans contain smoked, gray overcaps, housing terry cloth applicator sponges. Turtle Wax introduced this trade dress in the United States in August 1989 at the Automobile Parts and Accessories Association ("APAA") trade show. It was not officially introduced to the consuming public, however, until April 1990.³

In December 1989 or January 1990, First Brands began to develop a premium automobile polish to compete with plaintiff's Liquid Crystal. When introduced to the market in the latter part of 1990 and early 1991, defendant's Simoniz Ultimate Car Wax was packaged in metal cans bearing a substantial similarity to plaintiff's Liquid Crystal products. Defendant's product also is sold both in a liquid form in an upright, F-style can and in a paste form in the shorter, round can. (See PX 141, attached to this opinion as Appendix C.) The Simoniz cans also are designed with a black background, primarily gold lettering, and red detailing, and they depict a flashy red sports car across the front of the can. The Simoniz Ultimate products also contain overcaps with terry cloth applicator sponges, although those overcaps are black opaque in color, rather than a smoked gray.

The Report of Magistrate-Judge Guzman sets out in detail these and other facts relating to the products at issue in this case. The Report also provides pertinent information relating to the relevant automotive market. Turtle Wax has not objected to any of the Magistrate-Judge's factual findings. In fact, Turtle Wax describes those findings as "fair and accurate representations of the evidence adduced during the preliminary injunction hearing." (Plaintiff's Objections at 2.) Plaintiff's objections instead focus on Magistrate-Judge Guzman's application of the relevant facts to the legal authorities controlling plaintiff's claims. According to Turtle Wax, the Magistrate-Judge, "having made the correct findings, ... proceeded to misconstrue and misapply the applicable law to those findings." (Id.)⁴ Because Magistrate-Judge Guzman made meticulous and detailed findings in his Report, and because the parties have not objected to any of those findings before this Court, the Court will adopt the factual findings of the Magistrate-Judge and will not reiterate those findings in this opinion. (See Report at 2-28.)

III. ANALYSIS

The purpose of preliminary injunctive relief is "to minimize the hardship to the parties pending the ultimate resolution of the lawsuit." Faheem-el v. Klincar, 841 F.2d 712, 717 (7th Cir.1988). Before a plaintiff will be entitled to such relief, it must establish the following five elements:

1) no adequate remedy at law exists;

2) the moving party will suffer irreparable harm absent injunctive relief;

3) the irreparable harm suffered absent injunctive relief outweighs the irreparable harm the respondent will suffer if the injunction is granted;

4) the moving party has a reasonable likelihood of prevailing on the merits; and

5) the injunction will not harm the public interest.

Somerset House, Inc. v. Turnock, 900 F.2d 1012, 1014-15 (7th Cir.1990); see also Kellas v. Lane, 923 F.2d 492, 493 (7th Cir. 1991). Each element must be shown before an injunction will issue. Somerset House, 900 F.2d at 1015; see also Roland Machinery Co. v. Dresser Industries, Inc., 749 F.2d 380, 386-87 (7th Cir.1984). In recommending that the Court deny plaintiff's motion for a preliminary injunction, the Magistrate-Judge examined only the likelihood that plaintiff would succeed on the merits of its claims.⁵ After reviewing all the evidence and the applicable law, Magistrate-Judge Guzman concluded that plaintiff had failed to show a reasonable likelihood of prevailing on the merits. (Report at 47.) Thus, in accordance with the Seventh Circuit's decision in Ping v. National Education Association, 870 F.2d 1369, 1371 (7th Cir.1989), the Magistrate-Judge declined to reach the other required elements for preliminary injunctive relief and recommended that plaintiff's motion be denied. (Id.)

Turtle Wax concedes that to establish a cause of action for trade dress infringement, it must prove both: (1) that the trade dress of its Liquid Crystal product is protectable — that is, it is inherently distinctive or has acquired secondary meaning, and (2) that there is a likelihood of confusion with respect to the origin of defendant's Simoniz Ultimate product. See Roulo v. Russ Berrie & Co., 886 F.2d 931, 935 (7th Cir.1989), cert. denied, 493 U.S. 1075, 110 S.Ct. 1124, 107 L.Ed.2d 1030 (1990); Vaughan Manufacturing Co. v. Brikam International, Inc., 814 F.2d 346, 348 (7th Cir.1987). Moreover, even if plaintiff establishes both a protectable trade dress and a likelihood of confusion, it cannot prevail if defendant shows that plaintiff's trade dress is merely functional. Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1183 (7th Cir.1989); see also Eldon Industries, Inc. v. Rubbermaid, Inc., 735 F.Supp. 786, 795 (N.D.Ill.1990) (Rovner, J.). Plaintiff contends that it has established each of the required elements and that the Magistrate-Judge erred when he concluded that neither a protectable trade dress nor a likelihood of confusion had been shown. The Court addresses each of plaintiff's objections in turn.

A. Inherent Distinctiveness.

Turtle Wax first contends that Magistrate-Judge Guzman erred when he found that the Liquid Crystal trade dress was not inherently distinctive. Plaintiff agrees with the Magistrate-Judge that two tests exist for analyzing the inherent distinctiveness of a trade dress — that enunciated by the Second Circuit in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A.1977) (the "Seabrook test"), and the alternative test utilized by the Fifth Circuit in Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695 (5th Cir.1981), cert. denied, 457 U.S. 1126, 102 S.Ct. 2947, 73 L.Ed.2d 1342 (1982) (the "Chevron test"). (See Report at 30.)⁶ Although the parties and the Magistrate-Judge agree that these are the appropriate tests for inherent distinctiveness, Turtle Wax maintains that the Magistrate-Judge erred when he found that plaintiff had failed to satisfy either test.

1. Seabrook

In applying the Seabrook test of inherent distinctiveness, the Magistrate-Judge explained that he was required to determine whether plaintiff's trade dress "was a `common' basic shape or design, whether it was unique or unusual in a particular field, or whether it was a mere refinement of commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods." (Report at 36.) Seabrook, 568 F.2d at 1344; see also AmBRIT, Inc. v. Kraft, 812 F.2d 1531, 1536 (11th Cir.1987), cert. denied, 481 U.S. 1041, 107...