Tabberone Logo

Tabberone is pronounced tab ber won
not tay ber own

Tabbers Temptations Home | Site Index | Disclaimer | Email Me!
"The only thing necessary for the triumph of evil is for good men to do nothing"
Edmund Burke

[page 1166]
b. Similarity of Trade Dress

Similarity of appearance is determined by assessing the overall impression created by the trade dress as a whole rather than through a simple comparison of the individual features. Aveda Corp., 706 F.Supp. at 1429 (citing Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d 500, 505 (5th Cir.1980)). The similarity between the products must be compared as the products are encountered in the marketplace, taking into account the circumstances surrounding the purchase of the goods. Vitek Systems, Inc. v. Abbott Laboratories, 675 F.2d 190, 192 (8th Cir.1982).

Defendant first argues that plaintiff's analysis of the likelihood of confusion improperly focuses on post-sale rather than pre-sale conditions. In support of this argument, defendant relies upon Munsingwear Inc. v. Jockey Int'l, Inc., 31 U.S.P.Q.2d 1146, 1994 WL 422280 (D.Minn.1994), aff'd, 39 F.3d [page 1167] 1184 (8th Cir.1994) where the Eighth Circuit affirmed the trial court's opinion that the proper time to evaluate likelihood of confusion is pre-sale rather than post sale. But defendant fails to point out that the trial court explicitly premised its ruling for a presale analysis based upon the fact that "[A]ny relevant consumer confusion will occur prior to sale, if at all ... The inherently concealed nature of worn underwear diminishes the concern for post-sale confusion ..." Id. at 1150. Furthermore, the Munsingwear Court held that "The presence of permanent labeling has been generally recognized to make post-sale customer confusion unlikely." Id.

The Court rejects defendant's reliance upon this decision. Unlike the present action, this is not a case where defendant's products are inherently concealed. Nor do they contain any permanent label which may help to alleviate any confusion between the two products. The trademarks must be assessed for confusing similarity in a post-sale situation where many of the identifying factors will not be present. Lois Sportswear, U.S.A., Inc., v. Levi Strauss & Co., 631 F.Supp. 735 (S.D.N.Y.1985), aff'd, 799 F.2d 867 (1986). Therefore, the Court will apply a post-sale analysis in determining the likelihood of confusion between plaintiff's and defendant's products.

As set forth above, the Court finds that the products at issue are strikingly similar. Defendant's argument that its labeling on the box and the cellophane packaging preclude a finding of likelihood of confusion is without merit. The fact remains that once the electrodes are removed from the similar cellophane packaging, there is no indication whatsoever as to which products belong to Iomed. Neither the adhesive backing attached to the electrodes nor the white package containing the electrode contain any Iomed label; thus, unlike the Munsingwear case, this is not a situation where the product contains a "permanent" label which may dispel any likelihood of confusion as to the owner of the electrode. The labeling itself on the clear cellophane packaging is very similar with a black font upon a clear white label. Assuming the products were not removed from the cellophane package, one would still have to look fairly closely to determine which products belong to plaintiff and which belong to defendant.

The strongest similarity between the two products is, of course, the identical appearance of the electrodes themselves. It would be virtually impossible for a consumer looking at the electrodes to distinguish those of plaintiff's from those of defendant's. Defendant's argument regarding the hydration system on the drug delivery electrode is not a sufficient basis for eliminating the likelihood of confusion between the two products. The shape, color, and dimensions of the drug delivery electrodes of Iomed and Empi are almost exactly the same. Moreover, there is no perceivable difference between the shape, color, size, dimensions and overall appearance of the parties' ground electrode. Even the reverse side is an identical dark brown color square shape with a lighter brown border.


wordpress analytics