The opinion of the court was delivered by: Bassler, District Judge
Plaintiff Euro-Pro Corporation ("Euro-Pro") markets and sells a hand-held vacuum called "The Shark." Defendant Tristar Products ("Tristar") markets and sells a hand-held vacuum being sold under the name "Turbo Tiger." Central to this suit is Euro-Pro's claim that Turbo Tiger is virtually identical to The Shark and was designed to trade off of the good will created by Euro-Pro. *fn1
Euro-Pro moves *fn2 pursuant to Fed. R. Civ. P. 65 for a preliminary injunction to prevent Tristar from selling, importing, advertising or promoting Turbo Tiger. For the following reasons, Euro-Pro's motion for preliminary injunctive relief is denied.
This Opinion contains the Court's findings of fact and conclusions of law pursuant to Rule 52 of the Federal Rules of Civil Procedure. To the extent that any of the findings of fact might constitute conclusions of law, they are adopted as such. Conversely, to the extent that any conclusions of law constitute findings of fact, they are adopted as such.
On February 6, 2001, Euro-Pro filed a complaint against Tristar alleging trade dress infringement, false advertising, unfair competition, and false designation of origin, in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and the New Jersey statutory law against unfair competition, N.J.S.A. § 56:4-1, et seq. and N.J.S.A. 56:4A-1, et seq. On February 12, 2001, Tristar filed suit against Euro-Pro, Aviva Rosenzweig and Mark Rosenzweig *fn3 alleging false advertising and unfair competition in violation of the Lanham Act, and false "marking" in violation of 35 U.S.C. § 292. The two cases were consolidated on June 21, 2001.
On or about May 29, 2001, Euro-Pro requested an Order to Show Cause why a preliminary injunction should not issue enjoining Tristar from infringing the trade dress of Euro-Pro's The Shark and from falsely advertising *fn4 the allegedly infringing Turbo Tiger. The Court set an expedited discovery schedule. Oral argument was heard on July 20, 2001.
Euro-Pro markets and sells various houseware products throughout the United States and Canada, including a "600 Watt Turbo Power Hand Held Vac" vacuum cleaning system called "The Shark." Euro-Pro first introduced its 600 watt hand-held vacuum into the marketplace on November 29, 1999, on the Home Shopping Network. (Id. at ¶ 11.) Unlike, for example, the Black & Decker Dustbuster and the Royal Dirt Devil, which have squared off boxy shapes, Euro-Pro's hand-held vacuum is curved and is called "The Shark" because of its shark-like appearance. *fn5 (See Certification of Mark Rosenzweig ("Rosenzweig Cert."), at ¶¶ 7-9.) The Shark is available in metallic silver, which is the color featured in Euro-Pro's print advertisements and is the greatest selling color scheme; it is also offered in a green and white color scheme, as well as translucent blue, red, gray or purple. (Id. at ¶ 14.) The Shark has a shoulder strap and comes with two accessory brush attachments and an extension hose.
The Shark's appearance, while distinct from any other hand-held vacuum then sold in the United States, is purely decorative. (Id. at ¶ 9.) The true advantage of The Shark over other hand-held vacuums in the marketplace at that time was the extraordinary suction power derived from its ultra-small 600 watt motor. (Id. at ¶ 9.)
In Home Shopping Network demonstrations, The Shark is shown picking up a bowling ball and then the table on which the bowling ball was placed. The Shark is also demonstrated vacuuming a computer keyboard, different types of dirt and debris arranged in lines on a table (elbow macaroni, dry beans, pet hair, metal nuts, rock salt, glitter, bird seeds, popcorn), and draining a large glass of sand. (Id. at ¶ 11.) Since its introduction, The Shark has appeared regularly on the HSN and has reached millions of households. (Id. at ¶ 12.)
The techniques employed by Euro-Pro in demonstrating The Shark were repeated with still photographs in Euro-Pro's print advertisement. (See id. at Ex. B.) The print advertisements have been in nationally circulated publications such as Good Housekeeping, People Weekly, USA Weekend, TV Plus, The National Enquirer, The Wall Street Journal, and others. (Id. at ¶ 13.) Advertisements have also been included in the in-flight magazines for United Airlines, US Airways, and Southwest Airlines. (Id.) Sale of The Shark has been offered in catalogues such as Spiegel, Bloomingdales, Electric Odessy, Herrington, Fingerhut and the Chef's Catalogue. (Id.)
In total, Euro-Pro has spent approximately $7 million for promotion on television and in print. (Id.) Since its introduction, more than 700,000 units have been sold in the United States and an additional 200,000 units in Canada. (Id. at ¶ 15.)
In January 2001, while at a trade show, Euro-Pro's President, Mark Rosenzweig ("Rosenzweig"), first discovered the existence of the Princess *fn6 "Turbo Tiger." The curved design of the hand-held Turbo Tiger vacuum is virtually identical to The Shark, except that it has a closed handle, rather than an open handle, and comes in a metallic gold color. Like The Shark, Turbo Tiger also has a shoulder strap and comes with accessory brush attachments and an extension hose.
The television advertisements for Turbo Tiger, which began running in February 2001, (Deposition Tr. of Steven Sowers ("Sowers Dep.") attached as Ex. 1 to Colaizzi Cert. at 39:24-40:3), are infomercials that begin with the display of a live tiger and spokesperson Billy Mays. The infomercials then show the demonstrator lifting both two bowling balls and a table with Turbo Tiger. Turbo Tiger is also shown vacuuming a computer keyboard, different types of dirt and debris arranged in lines on a table (the same as those in The Shark commercial), and draining a large glass of sand. Throughout and at the end of the infomercial, is the statement - "if it doesn't say Princess, it is not the original Turbo Tiger." The infomercial also makes statements such as "unleash a tiger in your home."
While there are similarities in appearance and marketing, there is no dispute that the packaging of The Shark and Turbo Tiger are different. (See Pl.'s Reply Br., at 10.) Moreover, the products are available in different retail stores. The Shark is available at Wal-Mart, K-Mart, and Target. (Rosenzweig Cert., at ¶ 16.) Turbo Tiger is available at Walgreen's, Kohl's, Bed Bath & Beyond, and Linens `N Things. (Sowers Dep. at 41:5-17.)
Euro-Pro argues that the overall "look" of "the Shark" has been copied by Tristar; it also identifies in its Complaint the product's specific trade dress features:
(1) a hard shell, tubular body with round, conical front and rear ends;
(2) a 2-3 inch tapering vertical cross-section of the body near the horizontal mid-section of the body protrudes perpendicular to the curvature of the machine body in a rounded manner providing a pregnant-like feature to that area of the body;
(3) the front of the machine has an oval-shaped opening positioned toward the underside of the front that acts as ...