Opinion
Case No. CV-02-09422-RMT (Mcx).
June 21, 2004
MEMORANDUM
This matter came before the court for hearing on June 7, 2004 on the motion for preliminary injunction by plaintiff, Rain Bird Corporation ("Rain Bird") against Hit Products Corporation ("Hit"), pursuant to Fed.R.Civ.P. 65. Having granted Rain Bird's motion for preliminary injunction, the court issues this memorandum in lieu of findings of fact and conclusions of law.
BACKGROUND
Rain Bird is a corporation that is involved in the business of designing, producing, and selling sprinklers and turf irrigation products. Rain Bird has been in business since 1935. Rain Bird first started manufacturing and marketing its 1800 series pop-up sprinklers in 1977. From 1982, Rain Bird has been continuously using the same trade dress for the 1800 series pop-up sprinklers. Rain Bird markets a line of pop-up sprinklers identified by the designation 1800 (and 1800 series) which has a consistent overall appearance and external shape. The trade dress includes a head component having a top surface with three visually distinguishable rings all of equal width; a black textured outer ring displaying the name RAIN BIRD and a bird motif, designation 1800; a white inner ring (i.e., the White Ring Design) with eight equally spaced round dimples; and a black smooth middle ring. Rain Bird's trade dress also includes eight ribs formed on the sprinkler head sidewall, a pop-up riser (or stem) adapted for receiving a disposable orange-colored flush plug and/or spray nozzle, and a long cylindrical housing for sprinkler mechanisms. An exemplar of Rain Bird's trade dress is shown by the photographs attached to the complaint as Exhibits B (with disposable flush plug) and J (without the disposable flush plug).
Hit is also a corporation engaged in the business of designing, producing, and selling sprinklers and turf irrigation products. Hit also produces, markets, and sells pop-up sprinklers. Hit has two lines of pop-up sprinklers — the 800 series and the 500 series. Hit started selling its 800 series pop-up sprinklers in November/December of 2001. Hit's 800 series pop-up sprinklers have an overall appearance and external shape that is almost identical to Rain Bird's trade dress embodied in its 1800 series pop-up sprinklers. An exemplar of Hit's 800 series pop-up sprinklers is shown by the photographs attached to the complaint as Exhibits E (with the disposable flush plug) and K (without the disposable flush plug).
The only differences in the trade dress between Rain Bird's 1800 series pop-up sprinklers and Hit's 800 series pop-up sprinklers are as follows:
(1) Rain Bird uses eight dimples in the white ring design and Hit uses six;
(2) Rain Bird displays the words RAIN BIRD separated by its bird motif in all capital lettering and in an arcuate orientation, whereas Hit displays the words RAIN PRO in all capital lettering and in an arcuate orientation;
(3) Rain Bird displays the number 1800 directly across from the RAIN BIRD logo, and Hit uses the number 800 directly across from its RAIN PRO logo; and
(4) Rain Bird uses an orange flush plug, whereas Hit uses a green (and sometimes red) flush plug.
An exemplar of Rain Bird's sprinkler and Hit's sprinkler shown side-by-side is shown by the photographs attached to the complaint as Exhibits F (with the disposable flush plugs) and L (without the disposable flush plugs).
STANDARD OF REVIEW
In order to obtain a preliminary injunction ("Pl"), a party must either show (1) a likelihood of success on the merits and the possibility of irreparable injury, or (2) the existence of serious questions going to the merits and the balance of hardships tipping sharply in its favor. First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1381 (9th Cir. 1987).
LIKELIHOOD OF SUCCESS ON THE MERITS
Rain Bird seeks trade dress protection for its products and packaging, including its brand name, logo, numbering system, slogan, unique product features and overall trade dress. More specifically, Rain Bird seeks to preliminarily enjoin Hit from using its trademark RAIN PRO, from producing, marketing, and selling its 800 series pop-up sprinklers, and from using and advertising its slogans INTELLIGENT IRRIGATION SYSTEMS and INTELLIGENT IRRIGATION SOLUTIONS. The Lanham Act protects unregistered trademarks and trade dresses in order to prevent "consumer confusion regarding a product's source . . . and to enable those that fashion a product to differentiate it from the others on the market." Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1220 (2d Cir. 1987). "A seller's adoption of a trade dress confusingly similar to a competitor's constitutes unfair competition that is actionable under section 43(a) of the Lanham Act." Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir. 1989).
Rain Bird's PI motion is predicated on five causes of action from its complaint — (1) federal claim for infringement of U.S. trademark registrations; (2) federal claim of false designation of origin and misrepresentation regarding trademarks; (3) federal claim of false designation of origin and misrepresentation regarding trade dress; (4) state claim of trademark and trade dress infringement; and (5) state claim of unfair competition.
Rain Bird does not request injunctive relief for the product configuration, per se, or the white ring design, per se.
"A plaintiff seeking to recover for trade dress infringement under Section 43(a) [of the Lanham Act] must show that its trade dress is protectable and that defendant's use of the same or similar trade dress is likely to confuse customers."Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 841 (9th Cir. 1987). In order to succeed on the merits, Rain Bird must prove that the trade dress of its 1800 series pop-up sprinklers is (1) non-functional; (2) inherently distinctive or has acquired a secondary meaning; and (3) causes a likelihood of confusion. Id. at 842.
Trade dress refers to the overall appearance of the product as a whole and "may include features such as size, shape, color, color combinations, texture or graphics." Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993). Trade dress "must be examined as a whole, not by its individual constituent parts." Clicks Billard, Inc. v. Sixshooter, Inc., 251 F.3d 1252, 1259 (9th Cir. 2001). A product is functional if the overall trade dress is essential to the product's use or affects the cost or quality of the product. First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378-79 (9th Cir. 1987). "Functionality is a question of fact." Clicks, 251 F.2d at 1258. "The fact that individual elements of the trade dress may be functional does not necessarily mean that the trade dress as a whole is functional; rather, `functional elements that are separately unprotectable can be protected together as part of a trade dress.'" Id. at 1259 (quoting Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71, 76 (2d Cir. 1985). Rain Bird contends that although some parts of its 1800 series pop-up sprinklers are functional, the overall trade dress of the sprinklers is non-functional. Rain Bird contends that it is arbitrary and distinctive. The court finds that the color and size of the three rings for the three ring design, the number of dimples on the white inner ring, the style of the lettering of the Rain Bird logo and the number 1800, the designation of 1800 as a number series for the pop-up sprinklers, and the number of ribs on the sprinkler wall are all arbitrary and non-functional. The court further finds that the three ring design and the white ring design are distinctive and a source indicator for Rain Bird.
Rain Bird concedes that its cylindrical housing for the vertical stem and the spray nozzle are unprotectable because they are functional.
Hit contends that the design of its 800 series sprinklers is cost effective and functional. Hit contends that the three ring design is the most cost effective method of creating a pop-up sprinkler with a co-molded wiper seal. Hit further contends that in order to make a line of pop-up sprinklers with a co-molded seal, it must have the same overall trade dress as Rain Bird's 1800 series pop-up sprinklers. Where the court does not doubt that certain features of a pop-up sprinkler are necessary and functional, the court finds that Hit did not need to design and manufacture a complete replica of Rain Bird's 1800 series pop-up sprinkler line in pursuit of the most cost effective product. The court finds that the trade dress of Rain Bird's 1800 series pop-up sprinklers is non-functional.
The white ring design is essentially the co-molded wiper seal that eliminates potential water leakage between the seal and the cap. Rain Bird injects a dye that turns the off-white plastic ring into a bright white color, that it claims distinguishes Rain Bird from other pop-up sprinkler manufacturers.
Rain Bird has the burden of proving that its trade dress is inherently distinctive or has acquired a secondary meaning, where it has become recognizable by consumers or people in the industry. Fuddruckers, 826 F.2d at 843. The court finds that Rain Bird's trade dress has acquired a secondary meaning in the industry. The factors this court has taken into consideration are "whether actual purchasers associate [Rain Bird's] trade dress with [Rain Bird's 1800 series pop-up sprinklers], the degree and manner of [Rain Bird's] use of the trade dress, and whether [Rain Bird's] use of the trade dress has been exclusive." Vision Sports, 888 F.2d at 615. The Rain Bird trademark has been used continuously since 1935 and therefore, the irrigation industry knows of the RAIN BIRD brand well. Rain Bird has been using the three ring design for the 1800 series pop-up sprinklers since 1995 and the white ring design since 1983. Also, the trademark 1800 is registered on the Principal Register of the Patent and Trademark Office. "A certificate of registration of a mark upon the principal register . . . shall be prima facie evidence of the validity of the registered mark . . ." 15 U.S.C. Section 1057(b). Finally, sales of the 1800 series pop-up sprinklers have exceeded millions. Therefore, customers and industry consumers associate the design of the 1800 series pop-up sprinklers with Rain Bird. Rain Bird contends that no other sprinkler manufacturer has designed its pop-up sprinklers with an overall trade dress almost identical to Rain Bird's. Rain Bird has been in exclusive use of its trade dress since 1995 and the initial marketing of Hit's 800 series pop-up sprinklers in 2001. Furthermore, "proof of copying strongly supports an inference of secondary meaning." Id. There is evidence that Hit intended to copy Rain Bird's 1800 series line. Hit knew about Rain Bird's 1800 series line and advertised that the parts of its 800 series pop-up sprinklers were interchangeable with Rain Bird's 1800 series parts. The court finds that Rain Bird's trade dress has acquired a secondary meaning.
There is a likelihood of confusion "whenever consumers are likely to assume that a mark [or trade dress] is associated with another source or sponsor because of similarities between the two marks [or trade dresses]." Acad. of Motion Picture Arts Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1456 (9th Cir. 1991). In this case, it is not only the similarity of the marks that Rain Bird contends creates confusion, it is also the trade dress of the two products that increases the likelihood of confusion. The relevant factors that must be balanced in ascertaining the likelihood of confusion are: (1) strength of plaintiff's mark and trade dress; (2) similarities in mark and trade dress; (3) proximity of goods; (4) marketing channels; (5) evidence of actual confusion; (6) defendant's intent in selecting similar marks and designations; and (7) the degree of purchaser care. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979).
A mark is strong if it is "inherently distinctive," or "arbitrary or fanciful." Id. at 349. If a mark is not strong, it may still be protectable if it is a suggestive mark. Id. A suggestive mark "is actually viewed by the public as an indication of the product's origin or as a self-serving description of it." Id. At a minimum, the mark RAIN BIRD is suggestive. Rain Bird has been around since 1935 and well known in the irrigation industry. Rain Bird has a family of registered marks, all starting with RAIN. As discussed supra, Rain Bird's trade dress is also strong enough to deem it protectable.
Hit and Rain Bird both possess similar marks. Rain Bird's mark on the 1800 series pop-up sprinklers is RAIN BIRD. Hit's mark on its 800 series pop-up sprinklers is RAIN PRO. As discussed supra, both Hit and Rain Bird have similar trade dresses. Moreover, the product at issue here is pop-up sprinklers with a co-molded wiper seal. Therefore, both corporations not only sell the same type of irrigation product, but both products share an almost identical trade dress.
Marketing channels are the same for both corporations. Both Hit and Rain Bird market, sell, and cater to the same groups of consumers — contractors, architects, and other people working in the irrigation industry. Rain Bird also sells to the general public. "Convergent marketing channels increase the likelihood of confusion." Sleekcraft, 599 F.2d at 353 (citing J.T. McCarthy,Trademarks and Unfair Competition Section 24.6 (1973)). Since Hit and Rain Bird market to the same group of consumers, this increases the likelihood of confusion.
Actual confusion is difficult to prove. Rain Bird has not produced evidence of actual confusion. Hit has not produced evidence of lack of actual confusion. Therefore, this factor is not weighed in either party's favor.
Hit filed a declaration by Howard Marylander, who is a marketing consultant hired by Hit to conduct a survey to determine if a likelihood of confusion exists based on the brands RAIN BIRD and RAIN PRO. The court finds that the declaration is not reliable evidence to prove there is no actual confusion.
A lack of good faith on defendant's part is probative of a likelihood of confusion. Id. at 354. There is evidence that Hit intentionally copied Rain Bird's trade dress. Hit knew about Rain Bird's 1800 series pop-up sprinklers before creating its own 800 series pop-up sprinklers. Hit also marketed its 800 series as having parts that are interchangeable with Rain Bird's 1800 series. "A showing that the defendant intended to adopt the plaintiff's trade dress is also `entitled to great weight because a defendant is presumed able to accomplish this purpose[: that is, that the public will be deceived].'" Fuddruckers, 826 F.2d at 847 (citing Sleekcraft, 599 F.2d at 354). Hit's intent to copy Rain Bird's 1800 series pop-up sprinklers increases the likelihood of confusion.
"In assessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution." Sleekcraft, 599 F.2d at 353. However, "when the buyer has expertise in the field, a higher standard is proper though it will not preclude a finding that confusion is likely." Id. Hit contends that since it does not market or sell to the public there is no likelihood of confusion. Hit further contends that irrigation contractors and other people in the industry are savvy enough to distinguish between RAIN BIRD and RAIN PRO, and only use those products specifically called for by the job. However, the court finds that because the trade dress of Hit's sprinklers is so similar to the trade dress of Rain Bird's sprinklers, confusion is likely. Moreover, since Hit advertises its 800 series as having interchangeable parts with Rain Bird's 1800 series, Rain Bird has an interest in protecting its reputation. Even if Hit's parts are of equal quality to Rain Bird's parts, "present quality is no assurance of continued quality." Id. And "equivalence in quality may actually contribute to the assumption of a common connection." Id. at 354. This factor favors a finding that confusion is likely.
Weighing all the factors together, the court finds that a likelihood of confusion has been established. Moreover, a likelihood of success on the merits has been established.
POSSIBILITY OF IRREPARABLE INJURY
Irreparable injury is presumed if a likelihood of confusion is established. California Cooler v. Loretto Winery, Ltd., 774 F.2d 1451 (9th Cir. 1985). Since a likelihood of confusion has been established, irreparable injury to Rain Bird is presumed. However, a plaintiff's delay in seeking preliminary injunctive relief may negate the plaintiff's claim of irreparable injury. Oakland Tribune, Inc. v. Chronicle Pub. Co., 762 F.2d 1374, 1377 (9th Cir. 1985). Hit contends that Rain Bird's delay in filing the Pl motion proves Rain Bird is not irreparably injured. Rain Bird filed its complaint on December 11, 2002, and the instant Pl motion on April 23, 2004. Rain Bird waited almost two years to seek preliminary injunctive relief. However, shortly after Rain Bird learned of Hit's plans to market the 800 series pop-up sprinklers, Rain Bird took prompt action. Rain Bird first learned about Hit's 800 series pop-up sprinklers in the early months of 2002. In April 2002, Rain Bird's counsel sent a cease and desist letter to Hit. Hit ignored the letter and continued to sell its 800 series line. Initially, Rain Bird was observing Hit and its new line of sprinklers, to see if the new pop-up sprinklers would last on the market. In October 2003, Rain Bird and Hit engaged in settlement discussions. By February 2004, settlement negotiations ended. In April 2004, Rain Bird filed the Pl motion. Rain Bird contends that Hit's progressive encroachment and intentional infringement excuses any delay in filing the Pl motion. However, Rain Bird's contentions are based on a theory of laches. The court recognizes that Hit is not arguing laches. The court also recognizes that Rain Bird's delay undercuts the presumption that it suffers irreparable injury. However, "it is [not] important whether the movant consider[s] a preliminary injunction necessary at the time of filing the complaint. The relevant inquiry is whether the movant is in danger of suffering irreparable harm at the time the preliminary injunction is to be issued." Sl Handling Systems, Inc. v. Heisley, 753 F.2d 1244, 1264 (3d Cir. 1985). In addition, a portion of the time considered delay is attributable to settlement efforts. See Louis Rich, Inc. v. Horace W. Longacre, Inc., 423 F. Supp. 1327, 1335 (D.C. Pa. 1976). Here, the court finds that irreparable injury "in the sense that it may not be fully compensable in damages" exists. McLeod v. Hosmer-Dorrance, Inc., 192 U.S.P.Q. 683, 686 (N.D. Cal. 1976). Hit has injured Rain Bird's "enhanced goodwill and selling power" associated with its trade dress. Steinway Sons v. Robert Demars Friends, 210 U.S.P.Q. 954, 962 (N.D. Cal. 1981). "Such damage is irreparable since it is practically irreversible and impossible to assess." Id. Therefore, Rain Bird's delay in filing its Pl motion does not preclude a finding of irreparable injury.
CONCLUSION
The court finds that Rain Bird has established a likelihood of success on the merits and the possibility of irreparable injury. Therefore, preliminary injunction is appropriate.