The opinion of the court was delivered by: Wolin, District Judge.
In 1981, plaintiff, American Cyanamid Company,*fn1 registered
a color spectrum trademark with the United States Patent and
Trademark Office. The registration claimed the mark for use with
vitamin and mineral preparations. Accordingly, plaintiff has
since used the mark to identify its "Centrum" products.*fn2
The Centrum products, including Centrum (for the general
consumer), Centrum Silver (directed at those over fifty years of
age), and Centrum Kids (aimed at children over the age of two),
are the largest selling multivitamin-multiminerals in the United
States. They are sold in numerous trade classes-food, drug, mass
merchandise, warehouse clubs, wholesalers, and military
commissaries — with almost one hundred percent distribution
within these classes. In addition, fiscal year 1998 factory sales
for the Centrum products are projected to exceed $275 million;
unit sales for the same year are projected at 2.5 billion total
tablets for Centrum, 1.4 billion for Centrum Silver, and 132
million for Centrum Kids; and plaintiff enjoys leading market
shares for its Centrum and Centrum Silver products.
Plaintiff has spent considerable resources advertising and
promoting Centrum products. A particular strategy in this
marketing effort has been to reinforce consumers' familiarity
with the Centrum color-spectrum trademark. According to Leading
National Advertisers, a syndicated reporting service, $263
million in advertising has been spent on the Centrum products
over the last twenty years.
Recently, plaintiff has contemplated expanding the Centrum
product line to include individual nutritional supplements.*fn3
In 1998, plaintiff launched Centrum Herbals, a line of herbal
supplements.*fn4 Plaintiff alleges that expansion of its product
line to include Centrum Herbals is within plaintiff's natural
zone of expansion.
The appearance of Centrum's trademark is critical to the
determination of this motion. The registration certification
shows a band of thirteen adjacent colored vertical standing
rectangles aligned horizontally. From left to right, the colors
of the boxes vary gradually from deep blue to deep red,
noticeably imitating the colors of the visual spectrum.
Solaray and Kal products also bear labels incorporating colors
of the visual spectrum. Defendant has offered testimony that the
Solaray labels in question, or similarly designed labels, have
been sold since as early as 1984. Plaintiff disputes this, but
offers no evidence sufficient to give rise to a genuine issue of
material fact. Defendant has used the Kal labels at issue on its
products since as early as 1994.
The Solaray labels portray five colored stripes on which the
word "Solaray" is superimposed in yellow. The stripes are red,
orange, yellow, green, and blue. They appear lengthwise on the
label and sit one over the other as in the colors of our
The Kal labels depict a thin band of colors which range from
indigo to blue to green to yellow to orange to red to yellow and
then follow the same sequence in reverse. The band attaches to
the bold green lettering of the name of the product on the label
through the fluid extension of the letter into the color band. In
addition, on the same labels, Kal uses a rectangle that includes
a gold silhouette of a human form superimposed over a rectangular
background colored with bands of colors of the visual spectrum
ranging from indigo to green to yellow to orange to red. The
color bands are arranged one over another as are the Solaray
colored stripes, but are shorter and wider.
No evidence is before the Court that any consumer has, in fact,
ever confused the Solaray or Kal brands of food supplement
products with Centrum products.
Plaintiff charges that defendant's Solaray and Kal labels
infringe Centrum's trademark pursuant to § 32 of the Federal
Trademark Act (15 U.S.C. § 1114) and § 43(a) of the Federal
Trademark Act (15 U.S.C. § 1125(a)), dilute Centrum's trademark
in violation of § 43(c)(1) of the Federal Trademark Act
(15 U.S.C. § 1125(c)), and constitute unfair competition under the
laws of the State of New Jersey (N.J.S.A. §§ 56:4-1, 2).
Defendant contends in this motion for summary judgment that the
differences between, and qualities of, the parties' marks are so
obvious that, as a matter of law, this Court should dismiss
SUMMARY JUDGMENT STANDARD
Summary judgment shall be granted if "the pleadings,
depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party
is entitled to a judgment as a matter of law." Fed.R.Civ.P.
56(c); see Hersh v. Allen Prods. Co., Inc., 789 F.2d 230, 232
(3d Cir. 1986). In making this determination, a court must draw
all reasonable inferences in favor of the non-movant. See Meyer
v. Riegel Prods. Corp., 720 F.2d 303, 307 n. 2 (3d Cir. 1983),
cert. dismissed, 465 U.S. 1091, 104 S.Ct. 2144, 79 L.Ed.2d 910
(1984). Whether a fact is "material" is determined by the
substantive law defining the claims. See Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202
(1986); United States v. 225 Cartons, 871 F.2d 409, 419 (3d
"[A]t the summary judgment stage the judge's function is not
himself to weigh the evidence and determine the truth of the
matter but to determine whether there is a genuine issue for
trial." Anderson, 477 U.S. at 249, 106 S.Ct. 2505. Summary
judgment must be granted if no reasonable trier of fact could
find for the non-moving party. See id.
When the non-moving party bears the burden of proof at trial,
the moving party's burden can be "discharged by `showing' — that
is, pointing out to the District Court —
that there is an absence of evidence to support the non-moving
party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106
S.Ct. 2548, 91 L.Ed.2d 265 (1986). If the moving party has
carried its burden of establishing the absence of a genuine issue
of material fact, the burden shifts to the non-moving party to
"do more than simply show that there is some metaphysical doubt
as to the material facts." Matsushita Elec. Indus. Co., Ltd. v.
Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89
L.Ed.2d 538 (1986). When the non-moving party's evidence in
opposition to a properly-supported motion for summary judgment is
merely "colorable" or "not significantly probative," the Court
may grant summary judgment. See Anderson, 477 U.S. at 249-50,
106 S.Ct. 2505.
The Third Circuit has implied that trial courts should reserve
grants of summary judgment in trademark actions for exceptional
cases because "likelihood of confusion", a key element in
trademark infringement and unfair competition claims, generally
is itself a question of fact usually appropriate for a jury's
determination. See Country Floors, Inc. v. Partnership of Gepner
and Ford, 930 F.2d 1056, 1062-63 (3d Cir. 1991); see also A & H
Sportswear, Inc. v. Victoria's Secret Stores, Inc.,
166 F.3d 197, 201-02 (3d Cir. 1999) (en banc) ("`likelihood of confusion'
between two marks is a factual matter, subject to review for
clear error"). Concomitantly, however, Country Floors noted
that "`courts retain an important authority to monitor the outer
limits of substantial similarity within which a jury is permitted
to make the factual determination whether there is a likelihood
of confusion as to source.'" Country Floors, 930 F.2d at 1063
(quoting Universal City Studios, Inc. v. Nintendo Co., Ltd.,
746 F.2d 112, 116 (2d Cir. 1984)). Accordingly, courts in this
Circuit have not been hesitant to grant summary judgment where no
reasonable juror could find that a likelihood of confusion
existed. See e.g. 800 Spirits, Inc. v. Liquor by Wire, Inc.
14 F. Supp.2d 675, 678-81 (D.N.J. 1998); Smith v. Ames Dept. Stores,
Inc., 988 F. Supp. 827, 839-41 (D.N.J. 1997); Taj Mahal Enters.,
Ltd. v. Trump, 745 F. Supp. 240, 244-45, 254 (D.N.J. 1990).
A. Trademark Infringement and Unfair Competition
Plaintiff alleges that defendant's use of a color spectrum on
its Solaray and Kal products infringes Centrum's trademark
pursuant to § 32 of the Federal Trademark Act (15 U.S.C. § 1114)
and § 43(a) of the Federal Trademark Act (15 U.S.C. § 1125(a)),
as well as constitutes unfair competition pursuant to the law of
the State of New Jersey (N.J.S.A. §§ 56:4-1, 2).*fn5
"`The law of trademark protects trademark owners in the
exclusive use of their marks when use by another would be likely
to cause confusion.'" Fisons Horticulture, Inc. v. Vigoro
Industries, Inc., 30 F.3d 466, 472 (3d Cir. 1994) (quoting
Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462 (3d Cir.
1983)). Proof of trademark infringement requires plaintiff to
show that "(1) the mark is valid and legally protectable, (2) the
mark is owned by the plaintiff, and (3) the defendant's use of
the mark to identify goods or services is likely to create
confusion concerning the origin of the good or services." Fisons
Horticulture, 30 F.3d at 472.
Likelihood of confusion has been described as the "linchpin" of
a trademark infringement or unfair competition claim. See Matrix
Essentials, Inc. v. Cosmetic Gallery, Inc., 870 F. Supp. 1237,
1251 (D.N.J. 1994) (quoting Matrix Essentials, Inc. v. Emporium
Drug Mart, Inc., 988 F.2d 587, 590 (5th Cir. 1993), aff'd,
85 F.3d 612 (3d Cir. 1996)). It is a necessary element for claims of
federal trademark infringement
under 15 U.S.C. § 1114 and 15 U.S.C. § 1225(a), see Victoria's
Secret Stores, 166 F.3d at 205 and Matrix Essentials, 870
F. Supp. at 1253, as well as for unfair competition under New
Jersey common law and N.J.S.A. § 56:4-1. See Matrix Essentials,
870 F. Supp. at 1253; Apollo Distributing Co. v. Jerry Kurtz
Carpet Co., 696 F. Supp. 140, 142-43 (D.N.J. 1988).
Federal registration of the Centrum trademark is "prima facie
evidence of the validity of the registered mark and of the
registrant's ownership of the mark." Barre-National, Inc. v.
Barr Labs., Inc., 773 F. Supp. 735, 740 (D.N.J. 1991). Defendant
does not question that plaintiff owns the Centrum trademark or
that Centrum's federally-registered mark is legally protectable.
Accordingly, plaintiff satisfies the first two elements of
federal trademark infringement.
Defendant argues, however, that summary judgment on plaintiff's
trademark infringement and unfair competition claims is
appropriate because no reasonable juror could find, as a matter
of law, that the Solaray and Kal labels are likely to be confused
with Centrum's trademark. Plaintiff disagrees ...