United
States District Court, S. D. New York
Ralston Purina Co. v. Thomas J. Lipton, Inc.
341 F. Supp. 129
1972
METZNER,
District Judge:
Plaintiff
Ralston Purina Company [Purina] moves pursuant to Rule 65, Fed.R.Civ.P., for a
preliminary injunction restraining further use by defendant Thomas J. Lipton,
Inc. [Lipton] of the name Tender Dinners as a trademark for cat food
manufactured and sold by Lipton. In the alternative, Purina moves pursuant to
Rule 56, Fed.R.Civ. P., for summary judgment and a permanent injunction.
Jurisdiction is based on diversity of citizenship.
Plaintiff
is a Missouri corporation with its principal place of business in St. Louis.
For many years, among other things, it has been a major producer and marketer
of prepared, prepackaged cat food of various types. Lipton is a Delaware
corporation with its main offices in New Jersey. Through a subsidiary, Lipton
Pet Foods, Inc., defendant manufactures and markets cat food products
competitive with plaintiff's. Lipton Pet Foods is a Massachusetts corporation
with its principal place of business in that state.
In 1965
Purina began development of a new type of cat food which was a cross between
dry and moist. By June of 1968 the product was ready for marketing, and Purina
had settled on the name Tender Vittles. The trademark "Purina Tender
Vittles" was registered in the United States Patent Office on July 1, 1969,
with the word "Tender" disclaimed. Package design work was completed
in November 1969, and in May of 1970 initial sales were made through retail
outlets in the Miami area.
The
product consists of semi-moist pellets contained within four separate one and
one-half ounce airtight pouches, which in turn are enclosed in an outer
cardboard carton. The carton is approximately seven and one-quarter inches wide
by five and three-quarters inches high by one and one-half inches deep. There
are four flavors: liver, tuna, beef and gourmet dinner. The carton for each
flavor has a different color combination and pictures of different cats. The
name Tender Vittles appears in the upper left quadrant of the front face, with
the word "Tender" printed above the word "Vittles," and the
letters of each being approximately seven-eighths of an inch high. Above the
name Tender Vittles and in a contrasting color appears the house mark Purina in
letters approximately one-quarter of an inch high. Below the name Tender
Vittles appears the phrase "Soft, moist cat food" in letters the same
color as, but slightly smaller than, those used for the house mark. In the
lower left corner are the words "4 delicious meals" printed above the
words "4 1-1/2 OZ. foil packets." Running along the lower edge is
Purina's distinctive red and white checkerboard pattern. The right half of the
carton is taken up by a picture of a multi-colored cat or cats sitting behind a
bowl of Tender Vittles.
Tender
Vittles quickly proved a success. By July of 1970, sales were expanded to
certain selected cities throughout the country, and in February 1971
distribution began on a national scale. Marketing of the product was
accompanied by an advertising blitz which began in eastern markets in July 1970
and spread nationwide by April of 1971. For the period May 1, 1970 to June
30, 1971, promotional expenditures exceeded $4,000,000 and sales totaled
approximately $6,000,000. Tender Vittles had become a leader in the cat food
industry and by far the biggest seller of the semi-moists.
The
success of Tender Vittles can be contrasted with the totally unsuccessful
efforts of three other well known producers to market a semi-moist cat food at
about the same time. National Biscuit, Quaker Oats and General Foods had all
met failure.
In April
of 1969, Lipton began development of its own semi-moist cat food. In early 1970
it chose the name Tabby Tender Moist Total Dinners to designate the new
product. Marketing began in July 1970 in the Miami area.
Lipton's
product, as Purina's, consisted of semi-moist pellets in four airtight pouches
packaged in an outer cardboard carton. However, the carton for Tabby Tender
Moist Total Dinners presented an appearance totally different from that of
Tender Vittles. Apart from differences in name, lettering and layout, the shape
of the Lipton carton was small and squat as compared to Purina's. In addition,
of the four flavors chosen by Lipton, only liver was common to both brands.
It soon
became apparent that Tabby Tender Moist Total Dinners was unable to compete
with Tender Vittles, and by September of 1970 Lipton decided that several
changes had to be made. The result was that the size and general appearance of
the outer carton was wholly revamped, the retail price was reduced, the
composition of the semi-moist pellets was altered, and the name was changed to
Tender Dinners.
As the
product is presently marketed, its retail price corresponds to that for Tender
Vittles and its outer carton is identical in size and shape to the carton of
the Purina product. Unlike Tender Vittles, the color and picture on the Tender
Dinners carton does not change with each flavor. Liver is still the only flavor
common to both brands. All cartons contain the same picture of a white cat
eating Tender Dinners from a clear bowl against a white background. This
picture does not resemble any of the pictures on the Purina cartons. What does
change with each flavor of Tender Dinners is the color of the lettering on the
box.
The name
Tender Dinners appears in a banner across the upper third of the carton in
letters approximately three-quarters of an inch high. The letters are all lower
case, as contrasted with the letters comprising Tender Vittles, which are all
upper case. Directly above the word "Tender" in the upper left corner
of the Lipton carton is the house mark Tabby in red letters only slightly
smaller than those used for the words Tender Dinners. Below the name Tender
Dinners in brown letters approximately one-quarter inch high is the phrase
"softmoist cat food." In the lower left corner in even smaller
letters appears the legend "tasty meals in 4 pouches." The picture of
the cat covers the right half of the carton, and some of the lettering is
superimposed on the picture.
Lipton
began distribution of Tender Dinners in June or July of 1971, marketing the
product on a nationwide basis. Shortly thereafter Purina initiated the present
lawsuit, claiming that Lipton had consciously imitated the Tender Vittles name,
packaging, and promotion campaign. Purina contends that this conduct is likely
to cause confusion among purchasers of cat food and constitutes trademark
infringement and unfair competition.
Purina
seeks a preliminary injunction to restrain Lipton during the pendency of this
litigation from using the name Tender Dinners for its cat food. A preliminary
injunction is an extraordinary remedy and will not be granted absent a clear
showing by the movant of probable success at trial and possible irreparable
injury if relief is denied. Societe
Comptoir de L'Industrie Cotonniere Etablissements Boussac v. Alexander's Dept. Stores, 299 F.2d 33, 35 (2d Cir. 1962).
Determination
of the present motion requires consideration of three questions:
(1) Is
the name Tender Vittles fanciful or descriptive as applied to Purina's
semi-moist cat food?
(2) If
descriptive, has it acquired secondary meaning?
(3) If
secondary meaning has not been acquired, is this a case in which a preliminary
injunction should be granted absent secondary meaning?
As to the
first of these questions, a product designation is descriptive and therefore
invalid as a trademark if, as understood in its normal and natural sense, it
conveys to potential consumers the characteristics, functions, qualities,
ingredients, properties or uses of the product. Flexitized, Inc. v. National
Flexitized Corp., 335 F.2d 774, 779 (2d Cir. 1964); Stix Products, Inc. v.
United Merchants & Manufacturers, Inc., 295 F.Supp. 479 (S.D.N.Y.1968);
Restatement of Torts § 721. According to The Compact Edition of the Oxford
English Dictionary (1971), the primary meaning of the word "tender"
is: "Soft or delicate of texture or consistence; of food, easily
masticated or succulent." The same dictionary defines the word
"succulent" as "juicy." The word "vittles" is a
corruption of "victuals" and is listed in the dictionary as an
obsolete spelling. "Victuals" is defined as: "Food or provisions
of any kind." Thus, the combination "tender vittles" means food
which is soft, juicy and easily chewed.
This is
precisely a description of Purina's semi-moist cat food. The unique
characteristic of this product and the quality which sets it apart from other
non-canned cat foods is that it is soft and juicy. This is just what is
conveyed by the words "tender vittles."
Even
though a product name be descriptive, it may be protected as a trademark if it
has acquired secondary meaning. W. E. Bassett Co. v. Revlon, Inc., 435
F.2d 656 (2d Cir. 1970); 1 Nims, Unfair Competition and Trade-Marks § 36
(1947); Restatement of Torts § 716(b). A term which is descriptive and therefore
part of the public domain may, through usage by one producer with reference to
his product, acquire a special significance so that to the consuming public the
word has come to mean that the product is produced by that particular
manufacturer. 1 Nims, supra at § 37. This is what is known as
secondary meaning.
The crux
of the secondary meaning doctrine is that the mark comes to identify not only
the goods but the source of those goods. To establish secondary meaning, it
must be shown that the primary significance of the term in the
minds of the consuming public is not the product but the producer. Kellogg
Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 83 L.Ed. 73
(1938); 2 Nims, supra at § 334. This may be an anonymous
producer, since consumers often buy goods without knowing the personal identity
or actual name of the manufacturer. Tas-T-Nut Co. v. Variety Nut &
Date Co., 245 F.2d 3, 7 (6th Cir. 1957); Douglas Laboratories Corp. v.
Copper Tan, Inc., 108 F. Supp. 837, 841 (S.D.N.Y.1952), aff'd, 210
F.2d 453 (2d Cir. 1954); 1 Nims, supra at § 42. However, it
must be demonstrated that the purchasing public associates goods designated by
the particular word or words in question with but a single, though anonymous,
source. In other words, the consumer, having acquired confidence in the quality
of a particular product through usage, is entitled to protection against
imitations marketed by other producers.
Proof of
secondary meaning is often difficult. No precise guidelines are applicable and
no single factor is determinative. Each case must be decided on its own facts,
considering such elements as length and exclusivity of use, sales levels,
extent of advertising and promotion, etc. Compare Kellogg Co. v. National
Biscuit Co., supra [no secondary meaning even though plaintiff
originated term "shredded wheat," used it exclusively for over 30
years, and spent over $17 million in advertising], with Noma Lites, Inc.
v. Lawn Spray, Inc., 222 F.2d 716 (2d Cir. 1955) [secondary meaning possible
after a matter of months due to highly seasonal nature of plaintiff's
business], and Fund of Funds, Ltd. v. First American Fund of Funds, 274
F.Supp. 517 (S.D.N.Y.1967) [secondary meaning acquired after three years
due to plaintiff's rapid success and extensive publicity].
Proof of
secondary meaning entails rigorous evidentiary requirements. The term in
question must have been "used in such a manner, over such a period of
time, and to such an extent that the purchasing public associates" it with
the goods of a particular source. Automatic Washer Co. v. Easy Washing
Machine Corp., 98 F.Supp. 445, 450 (N.D. N.Y.1951).
In
considering the issue of secondary meaning in this case, it is important to
keep in mind the market in which Purina's product was sold. At the time in
question the semi-moist cat food market was very young and in a state of flux.
The life of the various semi-moist brands proved quite brief, and the public
was assaulted with a number of new products within a relatively short period of
time. One brand would spring up and die, only to be replaced by another, which
could be manufactured by the same producer as the old. Tender Vittles and
Tender Dinners were but two brands in this market. Although Tender Vittles came
first, it had been distributed for only a year when Tender Dinners first
appeared. In a market so new and unsettled, it is doubtful that the name of any
product could have acquired secondary meaning in so short a time.
The fact
that Tender Vittles became the biggest seller of the semi-moists means nothing
more than that it became the most popular. However, popularity and sales alone
cannot establish secondary meaning. Norwich Pharmacal Co. v. Sterling
Drug, Inc., 271 F. 2d 569, 572 (2d Cir. 1959), cert. denied, 362 U.S.
919, 80 S.Ct. 671, 4 L.Ed.2d 739 (1960); Remco Industries, Inc. v.
Toyomenka, Inc., 286 F.Supp. 948, 953 (S.D. N.Y.), aff'd per curiam, 397
F.2d 977 (2d Cir. 1968). Similarly, the fact that Purina spent $4,000,000
promoting its product merely indicates its efforts to establish secondary meaning,
but does not determine the success of those efforts. Remco Industries,
Inc. v. Toyomenka, Inc., supra at 953.
The
evidence offered by Purina other than sales and advertising levels is equally
inconclusive. Surveys showing levels of brand awareness for cat food products
among consumers demonstrate only that consumers have knowledge of brand names.
The surveys do not reflect any evaluation of the products which could form a
basis for the acquisition of a secondary meaning.
In
another survey, consumers were given discount coupons bearing the name Tender
Vittles. The survey showed that in redeeming the coupons approximately 35 of
175 persons exhibited greater or lesser confusion between Tender Vittles and
Tender Dinners. This amounts to nothing more than that the customer could not
read or did not really care. There is no showing that the customers wanted to
purchase Tender Vittles because of past experience with it, and purchased
Tender Dinners because of confusion in name and packaging. Tradesmen, in addition
to customers, are sources of proof in this area.
Having
carefully reviewed all the relevant evidence presented by the parties, the
court is of the opinion that Purina has failed to demonstrate a clear
probability of proving secondary meaning at trial. Purina cites W. E.
Bassett Co. v. Revlon, Inc., supra, for the proposition that
its burden is merely to show that Tender Vittles more likely than not has
acquired secondary meaning. This is another way of stating the preponderance of
evidence rule applicable in all civil cases. However, the Bassett decision
dealt with a plaintiff's burden at trial, not on a motion for preliminary
injunction, where the plaintiff must meet the somewhat higher burden of a
clear showing of probable success.
Of
course, the fact that Purina has failed to make a sufficient showing of
secondary meaning at this stage of the litigation to justify a preliminary
injunction does not preclude it from proving secondary meaning on the full
trial. Certainly sales levels and advertising expenditures for Tender Vittles
have been substantial, and the product's success in a relatively short period
of time has been extraordinary. Because of differences in burden of proof and
the opportunity to present additional evidence, Purina may succeed later where
it has failed now.
This
leaves for consideration the question of whether this is a case in which a
preliminary injunction should be granted absent secondary meaning. Both New
York and federal law allow injunctions to issue without proof of secondary
meaning in certain limited situations. Norwich Pharmacal Co. v. Sterling
Drug, Inc., supra. These involve cases in which the defendant
has engaged in various predatory practices such as abuse of confidential
business secrets (Noma Lites, Inc. v. Lawn Spray, Inc., supra),
breach of fiduciary duty (Flexitized, Inc. v. National Flexitized Corp., supra),
or palming off its product as that of plaintiff (Santa's Workshop, Inc. v.
Sterling, 2 A.D.2d 262, 153 N.Y.S.2d 839 (1956)).
In the
present case the question comes down to whether Lipton has been attempting to
palm off its semimoist cat food as Purina's. The court is of the opinion that
Purina has failed to present sufficient evidence to justify preliminary relief
at this stage of the litigation.
Palming
off is an attempt by one person to induce consumers to believe that his product
is actually that of another; it requires an intent to deceive and proof of
actual fraud. Venetianaire Corp. of America v. A & P Import Co., 302
F.Supp. 156, 160 (S.D. N.Y.1969), aff'd, 429 F.2d 1079 (2d Cir.
1970); Remco Industries, Inc. v. Toyomenka, Inc., supra 286
F.Supp. at 954; Restatement of Torts § 717, Comment a at pp.
565-66. The mere fact that two products have similarities as to name and
packaging does not necessarily establish palming off. Remco Industries,
Inc. v. Toyomenka, Inc., supra at 955; Pocket Books, Inc.
v. Meyers, 292 N.Y. 58, 54 N.E.2d 6 (1944). Absent secondary meaning, no
manufacturer can acquire a proprietary right in the physical construction or
coloring of the carton used for its product. Tas-T-Nut Co. v. Variety Nut
& Date Co., supra 245 F.2d at 5-6. Simulation, of course,
may be so extensive as to allow an inference of intent to deceive. 2
Nims, supra at § 335. However, so long as the defendant has
taken reasonable precautions to distinguish its product from that of plaintiff,
a finding of palming off will not be justified. Kellogg Co. v. National
Biscuit Co., supra; Tas-T-Nut Co. v. Variety Nut & Date
Co., supra 245 F.2d at 5-6.
Although
the names of the two products here are identical as to their first word, they
differ as to the second. Both words must be considered of equal dignity; a
consumer would not attempt to buy one of these cat foods merely by using the
word "tender." In such a situation the likelihood of deception must
be considered reduced. See J. R. Wood & Sons, Inc. v. Reese Jewelry
Corp., 278 F.2d 157 (2d Cir. 1960); Air Products, Inc. v. Marquette
Manufacturing Co., 301 F.2d 348, 49 CCPA 973 (1962); Dell Publishing Co.
v. Stanley Publications, Inc., 9 N.Y.2d 126, 211 N.Y.S.2d 393 (1961). In
addition, there are differences in packaging which are detailed above.
Most
significant is the emphasis given the house name Tabby on Lipton's carton. It
is displayed conspicuously above the word "Tender," in red letters
only slightly smaller than those used for the product name. Use of a house
name will generally not excuse infringement of a valid trademark. Menendez
v. Holt, 128 U.S. 514, 521, 9 S.Ct. 143, 32 L.Ed. 526 (1888); W. E.
Bassett & Co. v. Revlon, Inc., supra, 435 F.2d at
662; Tas-T-Nut Co. v. Variety Nut & Date Co., supra 245
F.2d at 7. However, in such cases intent to deceive is not an element. 2
Nims, supra at §§ 348-351. Where such intent is at issue, it
is doubtful that one who displays his house mark prominently on the front of
his product is attempting to palm that product off as another's. Kellogg
Co. v. National Biscuit Co., supra; Dell Publishing Co. v.
Stanley Publications, Inc., supra. Any consumer who is looking
for Purina's product need only glance at the face of Tender Dinners to see that
he has the wrong thing.
Here
again the court must emphasize that the fact that Purina has failed to make a
showing of intent to deceive sufficient to justify a preliminary injunction
does not preclude it from establishing such intent on the full trial.
Ultimately,
the present case comes down to balancing the need to ensure a competitive
marketplace against the necessity to protect the consuming public from
confusion or deception. See Norwich Pharmacal Co. v. Sterling Drug,
Inc., supra. Compromise is often required, and decision in any
given case depends on where the line is drawn. Although there certainly is a
difference between "a deliberate attempt to deceive and a deliberate
attempt to compete", (Norwich Pharmacal Co. v. Sterling Drug, Inc., supra, 271
F.2d at 572), the line is often fuzzy and not easily deciphered. While, as
already indicated, plaintiff may ultimately be successful in this lawsuit, the
nature of the proof submitted here, when weighed against the burden on the
court to draw the proper line, requires the denial of Purina's motion for a
preliminary injunction and for summary judgment.
So
ordered.