determination. Because likelihood of confusion is a question of law it is an appropriate issue for summary judgment." In this case, the Court held there was a genuine issue of fact whether the trademark "Paradise Island" was likely to be confused with the trademark "Paradise Isle." Id. at 836. However, in other cases where the trademarks or trade dress were substantially different, courts have ruled as a matter of law that there can be no likelihood of confusion. For example, in Specialty Surgical Instr. Inc. v. Phillips, 844 F. Supp. 1211 (M.D. Tenn. 1994), the Court granted summary judgment in a case involving trade dress infringement. The Court held as a matter of law that there was no likelihood of confusion between packages of surgical instruments. Id. at 1218-20.
II. Trade Dress Infringement
Construing the evidence in the light most favorable to the plaintiff, as required, the Court finds that there is no material issue of fact with respect to the issue of trade dress infringement.
Section 43(a) of the Lanham Act provides a cause of action for unprivileged imitations, including trade dress infringements. "Although historically trade dress infringement consisted of copying a product's packaging . . . 'trade dress' in its more modern sense [may] refer to the appearance of the [product] itself." Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 80 n.2 (3d Cir. 1982). "Trade dress is a complex composite of features" and "the law of unfair competition in respect to trade dress requires that all of the features be considered together." SK&F Co. v. Premo Pharmaceutical Labs., 481 F. Supp. 1184 (D.N.J. 1979), aff'd, 625 F.2d 1055 (3d Cir. 1980).
The Third Circuit has held that in order to prove trade dress infringement the plaintiff must show that "the feature or overall combination of features imitated is non-functional, that it has acquired secondary meaning, and that members of the consuming public are likely to confuse the source of the product bearing the imitating feature or combination with the source of the product bearing the imitated feature or combination." American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1141 (3d Cir. 1986).
When a feature is functional it may be copied even if confusion in the marketplace will result. Id. In this case the phrases "contains beta-carotene" and "complete nutritional supplement" are functional. These phrases are akin to a list of ingredients on a product. To hold that only Mr. Desoky can sell products that state "contains beta-carotene" or "complete nutritional supplement" would be to grant Mr. Desoky an unfair monopoly in the weight loss market.
Turning to the overall appearance of the products, the Court finds that Mr. Desoky may have a protectible interest in Nutri-Lene's overall appearance even though certain elements on the package are functional. Id. Thus, the Court will examine the overall appearance of the products under the test set forth by the Third Circuit in American Greetings. Namely, the Court will examine whether plaintiff has proven secondary meaning or a likelihood of confusion.
"Trade dress of a product acquires secondary meaning when the purchasing public 'associates' its design with a single producer rather than simply with the product itself." Coach Leatherware Co. v. Ann Taylor Inc., 933 F.2d 162, 168 (2d Cir. 1991) (citations omitted). Plaintiff has introduced no evidence of secondary meaning that has attached to the overall appearance on the Nutri-Lene cans.
More importantly, the Court finds that these two products are so visually distinct that there is no likelihood of confusion. The most prominent feature on plaintiff's product is the name "Nutri-Lene," which is accompanied by a medical symbol. The most prominent feature on defendant's product is the name "Professional Weight Control." No medical symbol appears on defendant's product. The graphic designs on the two products are different. The color of the labels is different. The size and shape of the lettering on the products is different. The words used on each label are different. Thus, the Court finds that there is no likelihood of confusion.
The Court finds that plaintiff's and defendant's products are so visually distinct that, as a matter of law, there is no likelihood of confusion. Therefore, the Court will grant defendant's motion for summary judgment and will dismiss plaintiff's claim for trade dress infringement with prejudice. Because absolutely no evidence of trademark infringement was submitted, the Court will grant defendant summary judgment on the issue of trademark infringement. The Court will also dismiss plaintiff's pendant state law claims without prejudice.
An appropriate order is attached.
Dated: April 19, 1995
ALFRED M. WOLIN, U.S.D.J.
In accordance with the Court's Opinion filed herewith,
It is on this 19 day of April, 1995,
ORDERED that defendant's motion for summary judgment is granted; and it is further
ORDERED that plaintiff's claim for trade dress infringement is dismissed with prejudice; and it is further
ORDERED that defendant's motion for summary judgment on the issue of trademark infringement is granted; and it is further
ORDERED that plaintiff's pendant state law claims are dismissed without prejudice.
ALFRED M. WOLIN, U.S.D.J.