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BENJAMIN MOORE & CO. v. TALON PAINTS PRODS.

March 11, 1996

BENJAMIN MOORE & CO., PLAINTIFF,
v.
TALON PAINTS PRODUCTS, INC., DEFENDANT.



The opinion of the court was delivered by: LIFLAND

 LIFLAND, District Judge

 The parties to this multiclaim action have filed motions relating to this Court's earlier grant of summary judgment in favor of plaintiff on its federal trade dress infringement claim. At this time, three of plaintiff's claims against defendant remain unadjudicated: federal trademark infringement, common law trade dress infringement, and unfair competition, pursuant to N.J.S.A. § 56:4-1, et seq. All of defendant's counter-claims were dismissed on July 18, 1995 on plaintiff's motion for summary judgment.

 Plaintiff has moved for entry of final judgment pursuant to Fed. R. Civ. P. 54(b) on its trade dress infringement claim, brought pursuant to § 43(a) of the Lanham Act. Plaintiff has also stated that, if its motion for final judgment is not granted, it will voluntarily dismiss its remaining claims with prejudice, with the exception of its trademark infringement claim, which it is willing to withdraw without prejudice.

 Defendant, on the other hand, asks the Court to vacate its Orders of March 29, 1994 and July 18, 1995 *fn1" relating to the trade dress issue in light of the Third Circuit's ruling in Versa Products Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189 (3d Cir.), cert. denied, 133 L. Ed. 2d 19, 116 S. Ct. 54 (1995).

 Background

 By order dated March 29, 1994, the Court ruled on plaintiff's and defendant's cross-motions for summary judgment. The Court found that defendant's "AQUA-FLOW" trade dress was confusingly similar to plaintiff's AQUAGLO trade dress and permanently enjoined defendant from offering for sale paint products embodying a trade dress substantially similar to plaintiff's AQUAGLO trade dress. The Court further ordered that defendant submit new labels to the Court for approval.

 On July 18, 1995, the Court ruled that defendant had intentionally infringed plaintiff's trade dress under § 43 (a) of the Lanham Act, making this an exceptional case under 15 U.S.C. § 1117(a). The Court awarded $ 74,857.10 in damages, i.e., lost profits, and $ 220,983.03 in attorneys' fees for the trade dress infringement. These amounts reflected damages and fees that had accrued through October 1994. Plaintiff stated that it would move for further damages relating to lost profits occurring after October 1994 at a later time. The Court also rescinded the parties' settlement agreement dated April 15, 1988 and ruled that, in light of this rescission, plaintiff was permitted to oppose and seek cancellation of the "AQUA-FLOW" trademark registered under Serial No. 648,607 with the United States Patent and Trademark Office.

 Defendant's Motion to Vacate Prior Orders and for Approval of Labels

 Defendant argues that the Court should vacate its previous summary judgment rulings and approve old and new labels for its "AQUA-FLOW" paint in light of this vacatur. Defendant sets forth two bases for its motion. Defendant first argues that the Third Circuit's decision in Versa Products Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189 (3d Cir.), cert. denied, 133 L. Ed. 2d 19, 116 S. Ct. 54 (1995), clarifies the law of trade dress infringement in such a way as to demonstrate that plaintiff's claim should fail. Secondly, defendant has submitted copies of "private labels" issued by plaintiff to its dealers. Defendant argues that these private labels are confusingly similar to plaintiff's AQUAGLO trade dress and that under Versa, plaintiff does not have a protectable trade dress right in the appearance of its AQUAGLO product. It is undisputed that these private labels had been used by plaintiff and were discoverable before the Court rendered its March 29, 1994 decision.

 Defendant argues that its motion is neither a motion for reconsideration and reargument pursuant to Local Rule 12(I) nor a motion for relief from judgment pursuant to Fed. R. Civ. P., Rule 60(b). Indeed, defendant's motion does not fall within the requirements of either of rules. Local Rule 12(I) provides that a motion for reargument may be filed within ten days after the entry of the order or judgment on the original motion. Defendant has clearly missed the window for filing a reargument motion.

 Fed. R. Civ. P., Rule 60(b) sets forth various grounds upon which a party may move for relief from a final judgment or order. Therefore, the procedural limitations of Rule 60 apply to defendant only if the Court's grant of partial summary judgment constitutes a final judgment. As discussed in relation to plaintiff's motion for entry of final judgment, below, the Court's previous summary judgment orders are not final. Therefore, although the Court notes that defendant's motion is inexplicably delayed, it will proceed to consider the merits of defendant's motion, placing the burden on defendant's shoulders to demonstrate to the Court why it should disturb its earlier rulings.

 The Court based its earlier trade dress ruling on the ten factors for analysis of "likelihood of confusion" in a Lanham Act action set out by the Third Circuit in Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3d Cir. 1978). Defendant argues that Versa, 50 F.3d 189, altered the Scott criteria for determining likelihood of confusion in a product packaging trade dress case by placing added emphasis on the presentation of the manufacturer's name on a product's packaging. Defendant relies upon the following quote from Versa:

 
"The most common and effective means of apprising intended purchasers of the source of goods is a prominent disclosure on the container, package wrapper, or label of the manufacturer's or trader's name... [and when] that is done, there is no basis for a charge of unfair competition." Venn v. Goedert, 319 F.2d 812, 816 (8th Cir.1963), quoted in Litton Sys., Inc., 728 F.2d at 1446.
 
Indeed, except where consumers ordinarily exercise virtually no care in selecting a particular type of product (as may be the case with inexpensive disposable or consumable items, cf. Venn, supra (cookies)), clarity of labeling in packaging and advertising will suffice to preclude almost all possibility of consumer confusion as to source stemming from the product's configuration.

 50 F.3d at 203. Based on this excerpt, defendant asks the Court to vacate its previous judgment and to rule that defendant did not infringe plaintiff's trade dress because its labels clearly display the manufacturer name Talon or American Home Paint.

 Defendant has taken the Versa decision totally out of context. Versa involved a claim of product configuration trade dress infringement. Defendant claims that, based on Versa, "it is hard to countenance any significant differences between a product packaging trade dress case and a product configuration trade dress case." This is a mischaracterization of the Versa decision, which stated at the outset that "the law of trade dress in product configurations will differ in key respects from the law of trademarks or of trade dress in product packaging." Id. at 202. Indeed, the question before the Versa court was whether the "Scott factors" apply in the same way to product configuration and product packaging trade dress cases. Id. at 193. The ...


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