Summary
holding that "Wite-Out" is suggestive and stating: "The name WITE-OUT could be descriptive of correction products in that most of the WITE-OUT products are white in color and used to take `out' a mistake. However, although the name WITE-OUT is logically related to its use, the phrase without more does not imply a correction product."
Summary of this case from Playtex Products v. Georgia-Pacific Corp.Opinion
99 Civ. 11385 (HB)
December 17, 2000
OPINION AND ORDER
Plaintiffs BIC Corporation and Wite-Out Products, Inc., ("BIC") brought this action for trademark infringement, unfair competition and trademark dilution pursuant to 15 U.S.C. § 1114, 15 U.S.C. § 1125 (a), 15 U.S.C. § 1125 (c), New York General Business Law § 349, § 350 and § 360, and New York common law. Plaintiff seeks a permanent injunction to prevent the defendant from continuing to use the WIPE-OUT mark for its correction products. For the following reasons, I find that plaintiff is entitled to injunctive relief.
In plaintiff's complaint it sought money damages in addition to injunctive relief, however to insure a purely equitable action plaintiff concluded to forego all claims for monetary damages.
I. Background
The following facts were established during a three day hearing. WITE-OUT is a trademark owned by BIC and used as the brand name for all of its correction products sold in the United States. Correction products include a variety of products including fluid, pens and tape, however all allow a user to correct an error, whether handwritten or typed, by covering it with the correction product. Since 1966, Wite-Out Products and BIC, who purchased Wite-Out Products in 1992, have used the "WITE-OUT" mark continuously with no small degree of success. The WITE-OUT brand is well-established as a market leader with 33% of the market share of correction products. In fact, WITE-OUT is the second leading brand of correction fluid after LIQUID PAPER. Together, the WITE-OUT and LIQUID PAPER brands account for 97% of the market share for correction products. Other noteworthy competitors include PESTO, MARKAWAY, ZEBRA, MONO and MANCO CORRECT-IT.
On February 5, 1974, Wite-Out Products, Inc. registered the WITE-OUT mark under Reg. No. 978, 134 with the U.S. Patent Trademark Office.
Since 1992, sales of WITE-OUT have totaled nearly $160 million. This volume of sales is no doubt due in part to the $16 million spent in advertising during this period. WITE-OUT products are carried in superstores, such as Staples, Office Max and Office Depot, as well as drugstores, dollar stores, food stores and convenience stores. The extensive sales and advertising of WITE-OUT products is reflected in widespread consumer recognition of the WITE-OUT brand. A consumer survey conducted by BIC in 1999, prior to the initiation of this action, showed an 86% unaided brand awareness for the WITE-OUT name, which was significantly higher recognition than for the BIC mark alone or even for BIC WITE-OUT. This means that when interviewers asked consumers to name brands of correction products, 86% of the consumer named WITE-OUT without any prompting from the interviewer. BIC offered testimony to the effect that it diligently works to protect the goodwill and equity of the WITE-OUT mark by monitoring the marketplace for possible trademark infringements.
Far Eastern is a small corporation established in 1996 to manufacture and sell "private label" stationary products. As a private label manufacturer, Far Eastern now markets products similar to those of the plaintiff and continues as it has in the past to sell stationary tape. Its sales base includes such stores as K-Mart, Walmart, Staples, Dollar Tree and Dollar General, who may or may not place their own name on the product.
Far Eastern first entered the correction products market at the November 1998 SHOPA, the annual trade show that includes correction products. Far Eastern displayed a correction tape bearing the mark WIPE-OUT and also correction fluid and pens under this mark. Far Eastern later stopped offering the fluid and pen products but continued to sell the correction tape. Lance James, President of Far Eastern, testified at the hearing that he selected the name WIPE-OUT without even considering other names because he believed that it suggested to consumers the function of the product — to wipe out your mistakes.
Although Far Eastern displayed the WIPE-OUT product in November 1998, the product has to date not been widely distributed. In fact, the WIPE-OUT brand has been sold only at selected Dollar Tree Stores. Dollar Tree, a retailer that primarily sells private label or discounted items, sells WIPE-OUT in its store brand color blue with its "Be Sharp" logo on the package. Pl. Ex. 44.
The parties dispute arose when BIC became aware of Far Eastern's use of the WIPE-OUT mark. Defendant claims that it was at the November 1998 SHOPA, but BIC contends that it was unaware of the mark until February 3, 1999, when Far Eastern filed a trademark application for WIPE-OUT. It is undisputed that on May 20, 1999, BIC's in-house counsel sent Far Eastern a cease and desist letter. As a consequence, while it did not stop manufacturing WIPE-OUT products, Far Eastern adopted a disclaimer on its WIPE-OUT product that stated: "WIPE-OUT not a BIC WITE-OUT product-COMPARE AND SAVE", which is printed vertically down the left side of its packaging. BIC objected to this disclaimer and continued to ask Far Eastern to cease its use of the WIPE-OUT mark. On June 8, 1999, the U.S. Patent and Trademark Office approved the defendant's registration application for WIPE-OUT. BIC filed a timely objection to Far Eastern's application, which is still pending. In November 1999, more than nine months after BIC contends that it learned of the WITE-OUT mark, it commenced this lawsuit. During this period in-house counsel for BIC and counsel for Far Eastern exchanged correspondence regarding the possibility of amicably resolving the matter.
Although the sales of WIPE-OUT have been limited to date, Far Eastern indicated in the course of this action that it planned to launch a nationwide advertising campaign to promote the WIPE-OUT brand. After BIC's filing of the complaint in this action, Far Eastern designed a nautical theme packaging to use in conjunction with its WIPE-OUT mark in that campaign to capitalize on the surfing connotations of WIPE-OUT (falling off your surfboard) and to further distinguish it from the WITE-OUT mark. At the annual trade show in November, Far Eastern launched its nautical theme for the WIPE-OUT product. Mr. James testified that the name and theme were well received and that he has commitments from major retailers to distribute WIPE-OUT correction tape.
In October, 2000, plaintiff moved for summary judgment on their claims. Finding issues of fact, I denied the plaintiff's motion and set a date for this hearing. Before it started plaintiff moved for reconsideration of the denial of summary judgment on the issue of whether BIC was a generic mark. While the transcript of the preliminary hearing suggested that this was likely my view, I heard further argument and decided to grant summary judgment on this issue concluding the plaintiff's mark was not generic.
II. Discussion
A. Trademark Infringement and Unfair Competition
The Lanham Act was enacted to protect both consumers and trademark owners by ensuring that consumers purchasing a product could be confident of purchasing the brand they intended to purchase and that owners who expended resources promoting their products would not have the resulting reputation and goodwill misappropriated. See Mana Products, Inc. v. Columbia Cosmetics MFG., Inc., 65 F.3d 1063, 1068 (2d Cir. 1995). Here, BIC claims violation of the unfair competition statute, 15 U.S.C. § 1125 (a) and the infringement statue, 15 U.S.C. § 1114.
1. Validity of the WITE-OUT mark
As a preliminary matter, I must determine whether the WITE-OUT mark qualifies for protection under the Lanham Act. In order to determine the level of protection due to a mark, courts often place marks in categories of increasing distinctiveness the strength of the mark is in direct proportion to its distinctiveness: generic, descriptive, suggestive, and arbitrary or fanciful. See Arbercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
I find that the WITE-OUT mark is suggestive and entitled to protection under the Lanham Act. "A mark is classified as descriptive if it `tells something about a product, its qualities, ingredients or characteristics," while "a suggestive mark is one that `suggests the product, though it may take imagination to grasp the nature of the product.'" Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503, 1509 (2d Cir. 1998). The name WITE-OUT could be descriptive of correction products in that most of the WITE-OUT products are white in color and used to take "out" a mistake. However, although the name WITE-OUT is logically related to its use, the phrase without more does not imply a correction product. For instance, WITE-OUT could refer to white wall paint that covers dark colors easily or a solvent that removes white water marks from wood furniture. Id. at 1510 (finding several possible meanings of "100% Time Release Moisturizer" that all required "some stretch of the imagination" and indicated that the mark was suggestive). Furthermore, to the extent that consumers automatically associate WITE-OUT with correction fluid, I find that to be due to the popularity of the product and not the descriptive quality of the mark.
Even if one were to find the mark descriptive, the evidence supports a secondary meaning and is protected under the Act.
2. Likelihood of Confusion
Having found that WITE-OUT warrants protection under the Lanham Act, the plaintiff, to prevail, must demonstrate "a likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed confused as to the source of goods in question" in order to prove its trademark infringement and unfair competition claims. Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256 (2d Cir. 1987); see also Lois Sportswear v. Levi Strauss Co., 799 F.2d 867 (2d Cir. 1986) ("In either a claim of trademark infringement under § 32 or a claim of unfair competition under § 43, a prima facie case is made out by showing the use of one's trademark by another in a way that is likely to confuse consumers as to the source of the product."). In Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961), Judge Friendly established the benchmarks for consideration on the issue of confusion: (1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that a prior owner will "bridge the gap"; (5) actual confusion; (6) defendant's good faith in adopting the mark; (7) the quality of defendants product; and (8) the sophistication of buyers. Id.
Courts have adopted a flexible approach and each factor is evaluated in the context of how it relates to the ultimate inquiry of likelihood of confusion. Lois Sportswear USA, Inc. v. Levi Strauss Co., 799 F.2d 867, 872 (2d Cir. 1986).
Here, where the products are in direct competition with each other, the third Polaroid factor, proximity of the products, is obvious. The fourth factor, bridging the gap, is not relevant. The seventh factor, the quality of the defendant's product, is not in issue, as BIC does not claim that Far Eastern's product is inferior. I will consider the remaining factors.
While Far Eastern alleges that BIC's product is inferior, this is not relevant as the quality analysis seeks to determine whether an inferior junior mark is "taking unfair advantage of the public goodwill earned by a well-established high quality product." Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1079 (2d Cir. 1993).
a. Strength of the Plaintiffs Mark
The strength of a mark is defined as "its tendency to identify the goods sold under the mark as emanating from a particular although possibly anonymous source." McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1131 (2d Cir. 1985). BIC has produced significant undisputed evidence of the strength of the WITE-OUT mark including the following: the mark has been on the market for thirty-four years, it has grossed over $160 million in sales in the last eight years, WITE-OUT products are sold in virtually every store that sells correction products, no established correction product in the marketplace utilizes a mark that is similar to WITE-OUT and since 1992 BIC has spent approximately $16 million to promote the brand. See Playtex Prods., Inc. v. First Quality Hygienic, Inc., 965 F. Supp. 339, 341-342 (E.D.N.Y. 1996) (holding that advertising expenditures, long and exclusive use, and substantial sales success all suggest the strength of a mark). Furthermore, BIC submitted results of a marketing survey that it conducted prior to this litigation wherein consumers were questioned and found to have a 86% unaided brand recognition rate for the WITE-OUT mark.
Conversely, Far Eastern argues that WITE-OUT is a weak mark. It contends that the fact BIC created "sub-brands" as they have such as WITE-OUT WIZARD and WITE-OUT ZAP is illustrative of that weakness. BIC, on the other hand, suggests that it wanted to change the stodgy image of correction products. Further, Far Eastern argues that WITE-OUT is weak because BIC considered not using the WITE-OUT name in France. This is similarly a perplexing argument. Indeed, many companies choose to market their products under different names in different countries. This does not diminish the strength of the mark in the United States, the location at issue here. Cf. Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266 (2d Cir. 1999).
b. Degree of Similarity Between the Marks
In determining the degree of similarity between two marks, "[t]he law does not require that trademarks be carefully analyzed and dissected by the purchasing public. It is sufficient if the impression which the infringing product makes upon the consumer is such that he is likely to believe the product is from the same source as the one he knows under the trademark." McGregor-Doniger, Inc. v. Drizzle, 599 F.2d 1126, 1133 (2d Cir. 1979). I find that the names WITE-OUT and WIPE-OUT substantially similar. There is only one letter difference between the two and both use the second word "Out" to convey idea of the removal of mistakes. Thus, based on the names, there is an undisputable similarity between the marks. Consolidated Cigar Corp. v. Monte Cristi de Tabacos, 58 F. Supp.2d 188, 198 (S.D.N.Y. 1999) (designations of Monte Cristi and Monte Cristo are almost identical both phonetically an visually).
Far Eastern's argument that WITE-OUT and WIPE-OUT have different dictionary definitions is undermined here where the testimony shows the risk is that customers making a quick purchase will confuse the two brands and will not spend the time to contemplate the distinct meanings of the marks.
Far Eastern argues that the use of the name BIC on WITE-OUT packaging provides the requisite distinction between the marks. I find this argument unconvincing. To hold that BIC's use of its name on WITE-OUT packages somehow reduced the protection normally accorded to a trademark is untenable. In fact, the cases cited by defendant to support this proposition are inapposite. The BIC name is not a part its registered trademark. Furthermore, Far Eastern's cases involve a defendant's use of its well known company name to distinguish its mark from a similarly named product. See Bristol Meyers Squibb Co. v. McNeil, 973 F.2d 1033 (2d Cir. 1992) (TYLENOL PM verses EXCEDRIN PM); WWW. Pharm Co. v. Gillette Co., 984 F.2d 567, 573 (2d Cir. 1993) (RIGHT GUARD SPORT STICK verses SPORTSTICK); Nabisco Inc. v. Warner Lambert Co., 220 F.3d 43 (2d Cir. 2000) (DENTYNE ICE verses ICE BREAKERS). This is not the case here. BIC has a trademark on the name WITE-OUT, and it is the WITE-OUT mark alone that is recognized by the vast majority of consumers as a correction product, as is evidenced by BIC's consumer survey. Here the founder of the company Mr. Bic added his name when it acquired the Wite Out Corporation in 1992, prior to that WITE-OUT was sold without the BIC name.
Far Eastern argues too that the use of the "BIC orange" prevents consumers from confusing a BIC correction product with the defendant's brand. This argument is similarly flawed. Although consumers may associate the orange color with BIC (defendant did not submit evidence to support this assumption) it is unlikely that consumers would assume that a product was not a BIC product because of an absence of the "BIC orange." This is particularly true since BIC does not use its BIC orange as the predominate color on all of its correction products. BIC's correction products are packaged in a range of colors and designs and on some of these items the use of the "BIC orange" is minimal. Therefore, Far Easter cannot rely on BIC's use of its "BIC orange" to distinguish its mark.
Defendants also points to the fact that one of the plaintiff's experts, upon comparing a package of WITE-OUT and a package of WIPE-OUT, conceded that the packages created "different impression[s]." However, "[t]he test is not whether the consumer will know the difference if he sees the competing products on the same shelf," but whether he will know the difference if he is presented with the junior mark and is familiar with the senior mark. See American Home Prods. Corp. v. Johnson Chem. Co., 589 F.2d 103, 107 (2d Cir. 1978). Furthermore, there is a distinct difference between asking an expert on the stand who has closely examined both packages whether they create a different impression and the impression created in a consumer making a quick buying decision. Significantly in the correction product market consumers spend little time deliberating and comparing brands of correction product. See infra II.A.2.e (discussing the sophistication of the consumers). Moreover, there is also no limitation on either BIC or WIPE OUT that prevents them from using different packages in the future. As a private label manufacturer, WIPE OUT may change its packaging and has, for a particular customer.
Defendant also argues that the differential in price between WIPE-OUT and WITE OUT makes their products dissimilar. To argue that a customer would recognize that a package of WIPE-OUT was not in fact a package of WITE-OUT assumes that the customer was aware of the usual price of WITE-OUT. It is undisputed that there are lower costs correction products offered by BIC and that some of its correction products are in fact sold in "dollar" stores. Therefore, I do not find the price difference to distinguish these two products for the average consumer.
Finally, Far Eastern argues that the name itself coupled with the nautical images evoked by the name adequately distinguish the marks. Far Eastern's nautical theme includes a blue package design with a wave, dispensers designed to resemble a shark and a snail, and the use of the surfing song "Wipe Out" in its planned advertising campaign. However the nautical theme does not distinguish these marks. BIC's correction products are produced in a multitude of designs, and the fact that a consumer sees a nautical theme package, even if he or she has her own surfboard, will not obviate the association with WITE-OUT.
In short, because of the nature of the correction products market, the packaging is less relevant in determining the similarity between the marks than in other situations in which a single package design is used for a product or when there have been minimal changes to a product's packaging over many years. Therefore, Far Eastern's argument that the packaging is what makes these products dissimilar is unavailing.
Far Eastern also relies on the disclaimer it has printed on the side of its package to distinguish its product from WITE-OUT. The Second Circuit has placed the burden of proving the effectiveness of a disclaimer squarely on the shoulders of the party relying upon it. The defendant has failed to meet this burden. See Home Box Office, Inc. v. Showtime/The Movie Channel Inc., 832 F.2d 1311, 1315-17 (2d Cir. 1987). Considering the fact that consumers make these purchases quickly, see infra II.A.2.e.; Tr. at 219-20 (testimony of plaintiff's expert Jacob Jacoby), and that the disclaimer uses only a "not" to distinguish the brands, it is likely that a consumer might either not see it at all or worse yet be even more keenly confused when the disclaimer includes the name BIC on the side. Id.
c. Actual Confusion
Proof of actual confusion is not a necessary element in an infringement claim, particularly since confusion is "very difficult to demonstrate with reliable proof" See Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1175 (2d Cir. 1976). Furthermore, where the marks and products are nearly identical, an absence of proof of actual confusion is "not especially significant." Guess ?, Inc. v. Mai-Tai Boutique, 7 U.S.P.Q.2d 1387 (S.D.N.Y. 1988). BIC has not offered any significant evidence of actual confusion between WITE-OUT and WIPE-OUT. Far Eastern has offered testimony of no confusion in the Dollar Tree Stores or at the trade shows. However, since WIPE-OUT has been on the market for only several months and only at selected Dollar Tree Stores, I find this evidence not particularly persuasive. See Centaur Comm. Ltd. v. A/S/M Comm., Inc., 830 F.2d 1217, 1227 (2d Cir. 1987) (four months of competition in the marketplace is not enough time for the court to require plaintiff to make a showing of consumer confusion).
d. Defendant's Good Faith
Although Far Eastern concedes that it was aware of the WITE-OUT mark and that it considered no other name than WIPE-OUT. There is insufficient evidence to show that Far Eastern acted in bad faith in selecting the WIPE-OUT mark. This factor is in the defendant's column.
e. The Sophistication of Consumers
BIC has offered substantial evidence that consumers do not engage in significant deliberations before purchasing inexpensive items such as correction fluid, and in fact may spend as little as 30 seconds deliberating. Far Eastern has not disputed this evidence. BIC argues that this "at-a-glance" purchasing exacerbates the likelihood that consumers will confuse the marks. See McGregor-Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126, 1137 (2d Cir. 1979). I agree and conclude that the low sophistication of the buyer and the impulse purchase factor increases the likelihood of consumer confusion, particularly given the slight difference in the spelling between the marks.
f. Likelihood of Post-Sale Confusion
Although not one of the factors in the Polaroid test, it is well established that a likelihood of post-sale confusion is relevant to determining a violation of the Lanham Act. See Lois Sportswear v. Levi Strauss Co., 799 F.2d 867, 872 (2d Cir. 1986) ("[I]t is equally clear that post-sale confusion is actionable under the Lanham Act."). Here, there is a risk of post-sale consumer confusion when the products would no longer be in their respective packaging. Far Eastern argues that its dispensers shaped like a snail or a shark will prevent post-sale confusion. However, as I discussed earlier, it is entirely possible that Far Eastern will not use these dispensers when it sells to a particular private label purchaser, as is in fact the case today with WIPE-OUT sales to Dollar Tree Stores.
Based on the above factors, BIC met its burden of demonstrating a likelihood of confusion, and therefore prevails in its infringement claims. As I find that the plaintiff has prevailed on this claim, I need not reach plaintiff's additional claims of trademark dilution.
Conclusion
For the above reasons I find that the plaintiff prevails on its claim of trademark infringement and is entitled to a permanent injunction prohibiting the defendant from continuing to use the WIPE-OUT mark on its correction products. The clerk is instructed to close this case.