Opinion
01 Civ. 0384 (RO).
July 5, 2006
AMENDED OPINION
This action is before me on remand from the Second Circuit, Natural Organics, Inc. v. Nutraceutical Corp., 426 F.3d 576 (2d Cir. 2005), familiarity with which is presumed. Natural Organics sues Nutraceutical Corp. and Solaray, Inc. ("Nutraceutical") for trade dress infringement under the Lanham Act and New York state law.
Natural Organics, which manufactures powdered soy drink mix under the "SPIRU-TEIN" label, among others, alleges that the trade dress for this product is infringed by that of Nutraceutical's "Soytein" soy drink mix. In my order of October 3, 2003, I ruled that the Soytein trade dress did not infringe. The Second Circuit remanded for explicit consideration of each of the factors set forth in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961), which courts in the Second Circuit apply to determine the likelihood of confusion. Those factors are:
(1) strength of the plaintiff's trade dress;
(2) similarity of the trade dresses;
(3) proximity of the products in the marketplace;
(4) likelihood that the plaintiff will bridge the gap between the products (enter a market related to that in which the defendant sells its product);
(5) evidence of actual confusion;
(6) the defendant's bad faith;
(7) quality of the defendant's product; and
(8) sophistication of the relevant consumer group.
Playtex Prods., Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 162 (2d Cir. 2004). I address the factors in turn.
Strength of the Plaintiff's Trade Dress.
"The strength of a mark is determined by its tendency to uniquely identify the source of the product. . . . Determination of strength therefore begins with inquiry as to whether the mark has the inherent distinctiveness that would entitle it to protection in the absence of secondary meaning. Marks are classified, in ascending order of strength, as (1) generic; (2) descriptive; (3) suggestive; [or] (4) arbitrary or fanciful." Star Industries, Inc. v. Bacardi Co. Ltd., 412 F.3d 373, 384-85 (internal citations and quotation marks omitted). "Acquired distinctiveness, as opposed to inherent distinctiveness, refers to the recognition plaintiff's mark has earned in the marketplace as a designator of plaintiff's goods or services." Playtex, 390 F.3d at 163. As I held previously, the SPIRU-TEIN trade dress contains "many generic elements that are commonly included in the trade dress of almost every competing protein drink mix." These generic elements include a glass of the beverage with a garnish, flavor indicators, taste claims, and tags indicating that the product is "non-GMO" and "heart healthy." The only inherently distinctive element is the SPIRU-TEIN logo itself. The record did not support a finding that the SPIRU-TEIN trade dress had acquired a secondary meaning.
Similarity of the Trade Dresses. As the Second Circuit has held in considering the similarity factor, "although [the trade dresses] share many similar elements, the prominence of the trade names on the two packages weighs heavily against a finding of consumer confusion resulting from the overall look of the packaging." Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1045-46 (2d Cir. 1992). I ruled previously that "[w]hile not completely free of question, the SPIRU-TEIN and Soytein trade dresses are sufficiently distinguishable considering their individual elements and the total impressions they give to consumers. The SPIRU-TEIN and Soytein trade dresses, while including many generic elements that are commonly included in the trade dress of almost every competing protein drink mix, the design and arrangement of these elements are different enough. The individual product names, SPIRU-TEIN and Soytein, are sufficiently different in types, arrangement, and color." A reexamination of the record affirms this holding. The respective logos are prominent and distinct, and this "go[es] far towards eliminating any possible confusion." Id. at 1046.
Proximity of the Products in the Marketplace. When products are sold in close proximity to one another, the opportunity for confusion in the mind of the consumer is created. See Patsy's Brand Inc. v. Spinelli, 317 F.3d 209 (2d Cir. 2003). The record has shown that the products are often sold within the same store. About half of the health food stores selling the products group them by brand — which would serve to dispel confusion — and the other half by product type, which could arguably create the opportunity for confusion. Accordingly, this factor tips slightly in favor of Natural Organics.
Bridging the Gap. This factor does not apply, as the products are in direct competition.
Evidence of Actual Confusion. The direct "evidence" of actual confusion consists of only the anecdotal testimony of one former employee of Natural Organics. This weak evidence is not persuasive. The failure of Natural Organics to "present its own consumer survey weighs against a finding of consumer confusion." Star Indus., 412 F.3d at 388.
Nutraceutical's Alleged Bad Faith. "Bad faith generally refers to an attempt by a junior user of a mark to exploit the good will and reputation of a senior user by adopting the mark with the intent to sow confusion between the two companies' products." Id. The record established that the Soytein trade dress was developed to distinguish it from other products on the market and make it appealing to female consumers, not to create confusion. Though the record did show a prior awareness by Nutraceutical of the SPIRU-TEIN mark, and awareness of a senior mark can support an inference of bad faith, here, plaintiff acknowledges that the evidence of copying is only circumstantial and that a close similarity of ingredients in a case such as this is within the junior's "right". My-T Fine Corp. v. Samuels, 69 F.2d 76, 77 (2d Cir. 1934). I do not find the required bad faith intent to confuse is adequately affirmatively shown, that defendants adopted the Soytein trade dress to be a "knock-off" of the SPIRU-TEIN trade dress.
Quality of Soytein. This factor does not support either party, as nothing in the record shows that the products are markedly different in quality from one another.
Sophistication of the Relevant Consumer Group. An "analysis of consumer sophistication `consider[s] the general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods.'" Id. at 390 (citation omitted). The target consumer group for these soy drinks consists of health food store customers, which the record shows tend to be mature, educated, female, and relatively affluent. The record also shows that these consumers generally make deliberative, informed decisions when purchasing these relatively expensive drink mixes. Accordingly, this factor militates in favor of there being a low likelihood of consumer confusion.
As is apparent from the above, the application of the Polaroid factors leads me to the conclusion that the Soytein trade dress does not infringe on that of SPIRU-TEIN. There being no showing of bad faith or likelihood of confusion, there is likewise no violation of New York law of unfair competition. See Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 35 (2d Cir. 1995).
Given the foregoing, the Court again dismisses plaintiff's complaint and all claims therein with prejudice.
Submit Order On Notice.