Spangler Candy Company v. Tootsie Roll Industries, LLC
Filing
47
Memorandum Opinion and Order: The motion for preliminary injunction filed by Plaintiff Spangler Candy Company is granted. The motion to exclude expert testimony filed by Defendant Tootsie Roll Industries, LLC is granted in part and denied in part. re 17 24 Judge Jeffrey J. Helmick on 3/13/2019. (S,AL)
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF OHIO
WESTERN DIVISION
Spangler Candy Company,
Case No. 3:18-cv-1146
Plaintiff
v.
MEMORANDUM OPINION
Tootsie Roll Industries, LLC,
Defendant
I.
INTRODUCTION
Plaintiff Spangler Candy Company moved for a preliminary injunction against Defendant
Tootsie Roll Industries, LLC. (Doc. No. 17). In response, Tootsie opposed the injunction, (Doc.
Nos. 25 (sealed) & 26 (redacted)), and moved to exclude expert testimony and reports introduced by
Spangler in its motion for preliminary injunction. (Doc. No. 24). Spangler then filed a
memorandum in opposition to expert exclusion, (Doc. Nos. 39 (sealed) & 40 (redacted)), and a reply
in support of injunctive relief sought. (Doc. Nos. 37 (sealed) & 38 (redacted)). Following this
briefing and at the request of the parties, I held oral argument on these matters.
II.
BACKGROUND
This litigation is centered upon the two lollipop bags pictured above.1 The bag on the left is
manufactured by Spangler, the one on the right by Tootsie. The undisputed facts are as follows.
In 2011, after spending 20 months and more than $220,000 in an effort to “refresh its DUM
DUMS packaging,” Spangler began using the packaging shown above. (Doc. No. 17-2 at 3-4). Since
that time, DUM DUMS have been continuously sold in this packaging. (Id. at 4).
In 2016, CHARMS MINI POPS, which then appeared in the packaging above, held only 0.04%
of the lollipop market. (Doc. No. 25-1 at 2). Because Spangler had been gaining market share and
was approaching that of Tootsie’s, Tootsie developed a strategy in which CHARMS MINI POPS would
compete with DUM DUMS. (Doc. No. 36-8, Doc. No. 36-13). Although the price and value
competition strategy was introduced in January 2017, the idea of changing the packaging was not
considered until May 2017.2 (Doc. No. 36-8; Doc. No. 36-12 at 23). By July 2017, the red
1
Spangler also alleges infringement of the yellow pallet boxes with a U-shaped cut out from which
the lollipops are sold. But because neither party devotes meaningful argument to this product, I will
limit my analysis to the bags themselves, as well.
2
A rebrand is mentioned in the January 2017 presentation documents, with reference to the
following tactics: “easier to read graphics” and “emotional appeal vs. descriptive.” (Doc. No. 36-8
2
packaging first appeared in Tootsie materials, and by September 2017, the design had been approved
for use. (Doc. No. 36-3 at 4, Doc. No. 36-5, Doc. No. 36-6). Although Tootsie enlisted the
services of a third-party consultant, Cassata & Associates, to develop initial designs, none of
Cassata’s proposed designs were used. 3 (Doc. No. 36-1; Doc. No. 36-12 at 17-18). Instead, with
knowledge of DUM DUMS trade dress and using no market research, Tootsie completely redesigned
the package in only five months. (Doc. No. 36-4; Doc. No. 36-12 at 31-32; Doc. No. 36-13 at 39,
41, 45-46).
Spangler learned of the new CHARMS MINI POPS packaging in March 2018 and sent a ceaseand-desist letter on April 3, 2018. (Doc. No. 25-2 at 20; Doc. No. 37-2 at 2-3). Tootsie promptly
rejected Spangler’s demand on April 12, 2018. (Doc. No. 37-2 at 4-6). After concluding Tootsie
intended wide distribution, Spangler filed suit in May 2018. (Doc. No. 1; Doc. No. 37 at 18).
III.
EXPERT TESTIMONY
As the trial judge, it is my duty to act as the “gatekeeper” and determine the admissibility of
expert testimony. See Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 147 (1999); Daubert v. Merrell
Dow Pharm., Inc., 509 U.S. 579, 592 (1993); Fed. R. Evid. 104(a). This inquiry is governed in part by
Rule 702, which provides,
A witness who is qualified as an expert by knowledge, skill, experience, training, or
education may testify in the form of an opinion or otherwise if:
(a) the expert's scientific, technical, or other specialized knowledge will help the trier
of fact to understand the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert has reliably applied the principles and methods to the facts of the case.
at 14). But Tootsie’s Charms Division Director of Marketing testified that the idea of changing the
packaging was first considered in May 2017. (Doc. No. 36-8 at 14; Doc. No. 36-12 at 23). This is
supported by the fact that the red Charms bag at issue does not appear in until July 2017, (Doc. No.
36-3 at 4), and further evident by the evolution of Halloween packaging introduced over the course
of 2017. (Doc. 36-2 at 16, Doc. No. 36-3 at 4, Doc. No. 36-4 at 16). Finally, the proposed designs
by the outside consultant are dated May or June 21, 2017. (Doc. No. 36-1).
3
This is somewhat odd since another Tootsie executive testified that Tootsie “depend[s] entirely on
[Cassata] to come up with the design” because it has no internal employees to do so. (Doc. No. 3613 at 37).
3
Fed. R. Evid. 702. Ultimately, an expert’s testimony will be admissible if it “both rests on a reliable
foundation and is relevant to the task at hand.” Daubert, 509 U.S. at 597.
A.
STEVE ULINE
Tootsie moves to exclude the report of Steve Uline on grounds that it will not help the trier
of fact, alleging the report states only conclusory opinions “based on no relevant data or reliable
methodology.” (Doc. No. 24-1 at 15). In part, I agree. But because Uline has the expertise
necessary to testify to the product development process through his background and experience in
marketing and branding, this section of the report is admitted. (Doc. No. 17-3 at 7-15; Doc. No. 246 at 12-13). Conversely, the remainder of his report must be excluded. (Id. at 5-6, 16-24).
The sections to be excluded are based upon unverified methodology and questionable
sources rather than “‘a reliable basis in the knowledge and experience of [the relevant] discipline.’”
Kumho, 526 U.S. at 141, 149 (quoting Daubert, 509 U.S. at 592, 594). First, Uline has no “specialized
knowledge” of many of the topics on which he opines. (Doc. No. 24-6 at 7, 9). Instead, his opinion
is informed by various blogs and articles he discovered through internet searches conducted in
preparation of this case. (Id. at 5-6). Second, though he quotes extensively to these articles and
blogs in the report and bases his opinion on them, Uline did not know many of the sources or
authors and was unable to attest to their reputation. (Id. at 8-14). Finally, Uline did not verify the
underlying data and methodology used to reach the conclusions upon which he relies and quotes.
(Id.). Therefore, Tootsie’s motion to exclude in granted in part as to Uline’s testimony.
B.
MARK KEEGAN
Like expert testimony, the admissibility of surveys is governed by the Daubert standard. See
Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 452 F. Supp. 2d 772, 777 (W.D. Mich. 2006).
“Because almost all surveys are subject to some sort of criticism, courts generally hold that flaws in
survey methodology go to the evidentiary weight of the survey rather than its admissibility.” Id. at
778 (citing cases). But “[i]f the flaws in the proposed survey are too great, the court may find that
4
the probative value of the survey is substantially outweighed by the prejudice, waste of time, and
confusion it will cause at trial.” Id. at 779 (quotation omitted). Tootsie argues the Squirt survey4
conducted by Spangler expert, Mark Keegan, must be excluded because the flaws are too great.
Keegan’s survey, conducted through online interviewing, began with several screener
questions to identify the survey population. Tootsie challenges neither these questions nor the
survey population.
After performing screener questions and receiving general instructions, respondents were
shown the DUM DUMS package and instructed, “Imagine that you are shopping for candy in a store
or online. Please consider this product as you would if you encountered it while shopping for candy
and are deciding whether to purchase it.” (Doc. No. 18 at 47). Although Keegan testified he was
“satisfied” respondents viewed the product for a sufficient amount of time to consider the product
as instructed, (Doc. No. 24-2 at 9), no evidence was produced to indicate how long respondents
viewed this screen before clicking “Next” to continue. This was the only time respondents were
able to view the DUM DUMS product during the survey. (Doc. No. 18 at 16).
Before proceeding to the likelihood-of-confusion measurement questions, respondents were
directed to a screen that possessed no question but only the instruction, “Again, imagine that you are
shopping for candy in a store or online. You will now be shown several additional candy products
and asked your opinions about them.” (Id. at 48).
After clicking “Next” again, respondents performed two likelihood-of-confusion
measurement questions. Both began with an instruction to “think of the first candy product you
saw earlier in this survey.” (Id. at 17,19, 49, 51) (emphasis in original). The first question asked,
“For each candy product shown below, please drag and drop each product into the boxes on the
right to indicate whether you believe that the product is put out by the same company that puts out
4
This type of survey was named after the case in which it was first used. See Squirt Co. v. Seven- Up
Co., 628 F.2d 1086, 1089 n.4 (8th Cir. 1980).
5
the first product you saw, a different company from the company that puts out the first product
you saw, or you don't know.” (Id. at 17, 49) (emphasis in original).
Respondents then proceeded to the second screen and were asked, “For each candy product
shown below, please drag and drop each product into the boxes on the right to indicate whether you
believe that the product is put out by a company that is affiliated, connected, or associated with
the company that puts out the first product you saw; a company that is not affiliated, connected,
or associated with the company that puts out the first product you saw; or you don't know.” (Id.
at 19, 51) (emphasis in original).
The controls pictured above were arranged vertically below each question, along with the
experimental stimulus – the red CHARMS MINI POPS bag. (Id. at 18, 20, 49-52). Next to the column
of products was the column of three boxes, which were headed with the boldfaced language of the
three options for each respective question. (Id.). For each question, respondents were able to “click
on each product to view a larger image.” (Id. at 17,19, 49, 51). Additionally, “[t]he presentation
order of the products was randomized across all respondents in each question to minimize the
potential for order bias.” (Id. at 20).
Following these two close-ended questions, the survey “concluded with several standard
demographic questions regarding household income and education level, as well as a final attention
filter question.” (Id. at 21).
6
1. Controls
In support of exclusion, Tootsie first makes a two-part challenge to the controls used in the
survey. Tootsie first claims Keegan should have used a “control group” rather than multiple
“control products” in a sample group. But while the use of proper controls is necessary, a control
group is not mandated.5 In fact, the Reference Guide on Survey Research, cited by Tootsie, states, “Control
groups and, as a second choice, control questions are the most reliable means for assessing response
levels against the baseline level of error associated with a particular question.” See Shari Seidman
Diamond, Reference Guide on Survey Research, in Federal Judicial Center, Reference Manual on Scientific
Evidence 359, 401 (3d ed. 2011) (attached as Doc. No. 24-3 at 47). Therefore, Keegan’s choice to
use controls products rather than a control group is not grounds for exclusion.
Turning to Tootsie second control-related challenge, Tootsie argues the control products
chosen produced unreliable results since they resembled neither DUM DUMS nor CHARMS MINI
POPS. In response, Spangler relies on Keegan’s compliance with the Reference Guide on Survey Research,
which states,
In designing a survey-experiment, the expert should select a stimulus for the control
group that shares as many characteristics with the experimental stimulus as possible,
with the key exception of the characteristic whose influence is being assessed.…Nor
should the control stimulus share with the experimental stimulus the feature whose
impact is being assessed.
Diamond, supra, at 399-400 (cited by Doc. No. 39 at 7). This instruction makes the task of selecting
control stimuli especially difficult when many characteristics of the experimental stimulus are being
assessed. See Jacoby, 92 Trademark Rep. at 928-29 (acknowledging the complexity of the issue of
5
See Jacob Jacoby, Ph.D., Experimental Design and the Selection of Controls in Trademark and Deceptive
Advertising Surveys, 92 Trademark Rep. 890, 894-95, 908-12 (July-August 2002) (distinguishing
between “external” controls applying “between-group” design and internal controls applying
“within-group” design) (“Without providing further illustrations, suffice it to say that within-group
designs relying upon internal controls are often employed in trademark surveys. To recognize that
this is so, all the reader need do is think of surveys that involve product (or ad) arrays.”). See also, e.g.,
Cumberland Packing Corp. v. Monsanto Co., 32 F. Supp. 2d 561 (E.D.N.Y. 1999); Hershey Foods Corp. v.
Mars, Inc., 998 F. Supp. 500 (M.D. Pa. 1998).
7
“how to design a ‘fair’ and proper control when deleting one allegedly confusing (or diluting)
element would leave many others intact”).
There is a fine line between finding a control which is similar enough to provide accurate
results as to likelihood of confusion but not too similar so as to cause confusion itself. Id. at 931.
“Strong” controls have more common features with the product at issue but are more likely to cause
confusion themselves, resulting in a “conservative estimate of ‘net confusion.’” Id. at 935-37.
“Weak” controls with fewer common features have the opposite result and are “likely to yield
inflated estimates of ‘net’ confusion.” Id. at 932-33. Ultimately, “[p]roper controls will approximate
‘background noise,’ the amount of confusion existing due to reasons unrelated to similarities in trade
dresses. Those controls must sufficiently account for factors legally irrelevant to the requisite
confusion, so that confusion ‘caused by’ similarities in the trade dresses can be isolated.”
Cumberland, 32 F. Supp. 2d at 574-75.
Due in part to the complexity and arbitrariness of control choice, courts have been reluctant
to exclude a survey based on inadequate controls alone. See, e.g., Innovation Ventures, LLC v. N2G
Distrib., Inc., No. 08-cv-10983, 2011 WL 6010206, at *5 (E.D. Mich. Nov. 30, 2011) (excluding a
survey for “multiple flaws which resulted in an unreliable scientific foundation for its conclusions”
including the use of an inadequate control); Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558,
629-30 (S.D.N.Y. 2007) (“[W]hile the poor choice of control bag is not dispositive of inadmissibility,
we note again that both Rule 702 and 403 require the court to look at the cumulative effect of all of
the flaws in a survey.”). Instead, applying the general rule for surveys, many courts have simply
chosen to give less weight to surveys using weak controls. See, e.g. Gucci Am., Inc. v. Guess?, Inc., 831
F. Supp. 2d 723, 740 (S.D.N.Y. 2011) (“While such a survey may be entitled to less weight than one
with closer-to-ideal controls, its relevance to the issue of association is not thereby eliminated for
purposes of determining its admissibility.”); CNG Fin. Corp. v. Google, Inc., No. 1:06-cv-040, 2007 WL
4790787, at *2 (S.D. Ohio Aug. 24, 2007) (“Assuming Mazis did not use a proper control, this does
8
not warrant excluding the survey and his report from evidence pursuant to Rule 702. Google's
objections regarding the selected control, as well as its remaining objections, go to the weight to be
afforded the survey.”). Accordingly, while the controls here are certainly flawed in that they all bear
“blatantly obvious differences” to the packages at issue, the survey will not be excluded on this
ground alone.
2. Survey Format
Tootsie next challenges the format of the survey. Specifically, Tootsie alleges use of closedended questions induced guessing and did not evaluate the likelihood that respondents were
influenced by factors other than trade dress.6 Close-ended questions “can be leading and
suggestive,” but the suggestive “effect can be mitigated through the use of a control question.”
Procter & Gamble Pharm., Inc. v. Hoffmann-LaRouche Inc., No. 06 Civ. 0034, 2006 WL 2588002, at *23
(S.D.N.Y. Sept. 6, 2006) (citation omitted). “Control questions offer a ‘don't know’ or ‘no opinion’
type of option, as part of a set of response alternatives to a closed-ended question.” Id. (citation
omitted); see also Diamond, supra, at 390 (attached as Doc. No. 24-3 at 36) (“By signaling to the
respondent that it is appropriate not to have an opinion, the question reduces the demand for an
answer and, as a result, the inclination to hazard a guess just to comply.”).
Because Keegan offered a “Don’t Know/No Opinion” option for each closed-ended
question, I conclude the questions were not unduly suggestive or guess-inducing. (Doc. No. 18 at
17,19, 49, 51). But since Keegan collected no information as to the respondents’ rationale, which
6
Tootsie makes two other allegations with respect to the format of the survey; I find merit with
neither. First, Tootsie takes issue with the number of controls. Second, Tootsie finds fault in
respondents having viewed the DUM DUMS package once for an unknown period of time before
completing the likelihood of confusion questions. Tootsie states respondents’ reliance on memory
of this single instance, coupled with the numerous dissimilar controls, influenced respondents to
“match a product that shared any resemblance.” (Doc. No. 24-1 at 15). Because Tootsie provides
no authority to suggest either alleged flaw would affect the weight or admissibility of the survey, I
find no need to devote meaningful analysis to either. But see 6 McCarthy on Trademarks and Unfair
Competition § 32:171 (5th. ed. 2018) (referring favorably to the “memory test”).
9
could have been assessed in an open-ended question, whether respondents were influenced by
factors other than trade-dress similarity remains unknown.
Due to the use of weak controls and failure to meaningfully assess background noise, I
conclude Keegan’s survey must be afforded little to no weight. Because the flaws are not so great as
to warrant exclusion, Tootsie’s motion to exclude Keegan’s survey and report is denied.
IV.
PRELIMINARY INJUNCTION
A preliminary injunction is “an extraordinary remedy that may only be awarded upon a clear
showing that the plaintiff is entitled to such relief.” Winter v. Natural Res. Def. Council, Inc., 555 U.S.
7, 22 (2008). To make such a showing, the plaintiff “must establish that he is likely to succeed on
the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the
balance of equities tips in his favor, and that an injunction is in the public interest.” Winter, 555 U.S.
at 20; see also Bonnell v. Lorenzo, 241 F.3d 800, 809 (6th Cir. 2001). “As long as there is some
likelihood of success on the merits, these factors are to be balanced, rather than tallied.” Hall v.
Edgewood Partners Ins. Ctr., Inc., 878 F.3d 524, 527 (6th Cir. 2017); but see Winters, 555 U.S. at 22-24
(treating these factors as quasi-elements) (“Our frequently reiterated standard requires plaintiffs
seeking preliminary relief to demonstrate that irreparable injury is likely in the absence of an
injunction.”) (emphasis in original).
A.
LIKELIHOOD OF SUCCESS ON THE MERITS
To prove the first factor, Spangler must demonstrate it has “a strong likelihood of success
on the merits.” Certified Restoration Dry Cleaning Network, L.L.C. v. Tenke Corp., 511 F.3d 535, 543 (6th
Cir. 2007) (citation omitted). That is, while Spangler need not “prove [its] case in full,” it “must
show more than a mere possibility of success.” Id. (quoting first, Univ. of Tex. v. Camenisch, 451 U.S.
390, 395 (1981), and second, Six Clinics Holding Corp., II v. Cafcomp Sys., Inc., 119 F.3d 393, 402 (6th
Cir. 1997)). As such, “it is ordinarily sufficient if the plaintiff has raised questions going to the
merits so serious, substantial, difficult, and doubtful as to make them a fair ground for litigation and
10
thus for more deliberate investigation.” Six Clinics, 119 F.3d at 402 (citing In re DeLorean Motor Co.,
755 F.2d 1223, 1229 (6th Cir. 1985)).
In this case, Spangler asserts a claim of infringement of unregistered trade dress under
section 43(a) of the Lanham Act. See 15 U.S.C. § 1125(a)(1). “[T]o recover for trade dress
infringement under § 43(a), a party must prove by a preponderance of the evidence: 1) that the trade
dress in question is distinctive in the marketplace, thereby indicating the source of the good it
dresses, 2) that the trade dress is primarily nonfunctional, and 3) that the trade dress of the
competing good is confusingly similar.” Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc.,
280 F.3d 619, 629 (6th Cir. 2002).
“Trade dress refers to the image and overall appearance of a product. It embodies that
arrangement of identifying characteristics or decorations connected with a product, whether by
packaging or otherwise, that makes the source of the product distinguishable from another and
promotes its sale.” Id. (brackets, ellipses, and internal quotation marks omitted). “Trade dress
‘involves the total image of a product and may include features such as size, shape, color or color
combinations, texture, graphics, or even particular sales techniques.’” Id. (quoting Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992)) (further quotation omitted). Spangler asserts Tootsie
infringed upon the following elements of the DUM DUMS unregistered trade dress: (1) red bag with
the brand name in white letters; (2) display window; and (3) violator consisting of a yellow oval with
blue numerals.
1. Distinctiveness
The first element of distinctiveness is satisfied if the trade dress “either (1) is inherently
distinctive or (2) has acquired distinctiveness through secondary meaning.” Two Pesos, 505 U.S. at
769 (emphasis in original).
11
i.
Inherently Distinctive
“A mark or dress can be inherently distinctive if its ‘intrinsic nature serves to identify a
particular source.’” Abercrombie, 280 F.3d at 635 (quoting Two Pesos, 505 U.S. at 768). Although
Sixth Circuit case law is fairly developed as to the inherent distinctiveness of word marks, it provides
minimal instruction in the areas of product packaging and appearance. But I find the Tenth Circuit
case cited by Spangler persuasive. See Forney Indus., Inc. v. Daco of Mo., Inc., 835 F.3d 1238 (10th Cir.
2016). Considering various circuit and district court cases as well as secondary sources, and
acknowledging the Supreme Court’s holding that color cannot be inherently distinctive,7 id. at 124851, the Forney court held “the use of color in product packaging can be inherently distinctive … only
if specific colors are used in combination with a well-defined shape, pattern, or other distinctive
design.” Id. at 1248.
Applying this holding, I conclude the Dum Dum trade dress elements at issue are not
inherently distinctive. While this case is distinguishable from Forney since Spangler details the
specific elements at issue, the elements cited are not distinctive to the DUM DUMS packaging. Many
candies on the market are packaged in a red bag with white brand lettering, a display window, and a
violator indicating the product count that is sometimes yellow, blue, or oval-shaped.8 (Doc. No. 261). As such, the DUM DUMS trade dress is not inherently distinctive.
7
See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-12 (2000) (citing Qualitex Co. v.
Jacobson Prods. Co., Inc., 514 U.S. 159, 162-63 (1995)) (“Indeed, with respect to at least one category of
mark—colors—we have held that no mark can ever be inherently distinctive.…We held that a color
could be protected as a trademark, but only upon a showing of secondary meaning.”).
8
See Restatement (Third) of Unfair Competition § 13 (1995) (October 2018 update)
(“Commonplace symbols and designs are not inherently distinctive since their appearance on
numerous products makes it unlikely that consumers will view them as distinctive of the goods or
services of a particular seller. Thus, unless the symbol or design is striking, unusual, or otherwise
likely to differentiate the products of a particular producer, the designation is not inherently
distinctive.”); see also 1 McCarthy on Trademarks and Unfair Competition § 8:13 (5th ed. 2018)
(discussing the fact that when an element of packaging is custom within a particular industry it
cannot be inherently distinctive).
12
ii.
Secondary Meaning
“A non-inherently distinctive mark or dress can have acquired distinctiveness through
attachment of secondary meaning, which occurs when, ‘in the minds of the public, the primary
significance of a [mark or dress] is to identify the source of the product rather than the product
itself.’” Abercrombie, 280 F.3d at 635 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851
n.11 (1982)). To determine whether a trade dress has acquired secondary meaning, the court may
consider the following seven factors:
(1) direct consumer testimony, (2) consumer surveys, (3) exclusivity, length, and
manner of use, (4) amount and manner of advertising, (5) amount of sales and
number of customers, (6) established place in the market, and (7) proof of
intentional copying.
Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 418 (6th Cir. 2006) (citation omitted). While
Spangler need not prove every factor, the evidentiary burden is “substantial,” requiring Spangler
“show[ ] by a preponderance of the evidence that consumers view the trade dress as denoting a
single thing coming from a single source.” Leapers, Inc. v. SMTS, LLC, 879 F.3d 731, 741 (6th Cir.
2018) (citing Herman Miller, Inc. v. Palazzetti Imps. & Exps., Inc., 270 F.3d 298, 312 (6th Cir. 2001) and
DeGidio v. W. Grp. Corp., 355 F.3d 506, 513 (6th Cir. 2004)) (internal quotation marks and further
citation omitted).
Spangler concedes there is no consumer testimony or survey evidence available at this time
in support of secondary meaning. (Doc. No. 37 at 7). Further, with respect to advertising, Spangler
asserts that, while it “lacks the scale necessary for television and mass media advertising,” the trade
dress in itself should be considered the principle vehicle for advertising in support of this factor. (Id.
at 9; Doc. No. 25-2 at 21). Because Spangler does not advertise in any way other than by placing its
product on a shelf, this factor need not be considered, either. Therefore, four factors remain.
The amount-of-sales and established-place-in-the-market factors weigh in Spangler’s favor,
since DUM DUMS is “the best-selling lollipop brand in the United States, with significant sales” and
strong brand loyalty. (Doc. No. 37 at 9; Doc. No. 25-3 at 2; Doc. No. 25-4 at 12).
13
Regarding the exclusivity, length, and manner of use, Spangler concedes that it has been
using this specific packaging only since 2011 but asserts it “has used red packaging and many of
the same graphic elements to market and sell DUM DUMS® for over 23 years.” (Doc. No. 17-1 at
13). Tootsie does not dispute this but contends Spangler has not had exclusive use of this trade dress
since that time, pointing to the numerous candies packaged in red bags with windows and violators.9
(Doc. No. 26-1). To rebut Tootsie’s argument and prove this factor, Spangler states that while other
candy bags possess some of the same elements, the combination of these elements is exclusive to
the DUM DUMS trade dress. This is true. But due to the similarities between the DUM DUMS bag
and others on the market, I find that though this factor weighs in favor of Spangler due to its length
of use10 and possible exclusivity, it must be given little weight.
Finally, to prove intentional copying, Spangler points to the obvious resemblance between
the new CHARMS MINI POPS bag and the DUM DUMS bag. (Doc. No. 17-1 at 15). Tootsie offers
little in the way of rebuttal, other than to conflate intent to copy with intent to deceive. (Doc. No.
25 at 22). But, as Spangler correctly notes, the intent to copy is distinguishable from the intent to
9
This argument by Tootsie is the only one in which I find possible merit. Briefly, as noted by
Spangler, Tootsie misplaces its reliance on Ward v. Knox Cnty. Bd. of Educ., 612 F. App’x 269 (6th Cir.
2015). Although Tootsie is correct in its assertion that the court ultimately found the mark in
question had not acquired a secondary meaning, the court noted that the “exclusivity, length, and
manner of use” factor weighed in the plaintiff’s favor because plaintiff had been using the mark
“exclusively and consistently for approximately 20 years.” 612 F. App’x at 273. Accordingly, if
Ward is relevant here, it would support Spangler’s position, not Tootsie’s.
Further, I reject Tootsie’s argument that all DUM DUMS packaging must possess the same trade
dress. The DUM DUMS bags submitted in support of Tootsie’s position appear to be promotional or
seasonal packaging, rather than the general packaging. Were this rule to prevent trade dress
protection based on the use of seasonal promotions alone, a great many products, including
CHARMS MINI POPS, (Doc. No. 36-12 at 51-52), would lose protectable trade dress rights.
10
At the time Tootsie developed the new CHARMS MINI POPS packaging in July 2017, Spangler had
been consistently using the packaging in question for approximately six years. Using section 2 of the
Lanham Act as guidance, I find six years sufficient to support this factor. See 15 U.S.C. § 1052
(“The Director may accept as prima facie evidence that the mark has become distinctive, as used on
or in connection with the applicant's goods in commerce, proof of substantially exclusive and
continuous use thereof as a mark by the applicant in commerce for the five years before the date on
which the claim of distinctiveness is made.”).
14
deceive; secondary meaning requires intent to copy alone. (Doc. No. 37 at 10 (citing Groeneveld Transp.
Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494, 514 (6th Cir. 2013))).
Here, Tootsie’s Charms Division Director of Marketing testified Tootsie’s intent in the
redesign was to develop a bag that was better than its primary competitor – DUM DUMS – and
ultimately obtain market share at the expense of DUM DUMS. (Doc. No. 36-12 at 21, 28-30; see also
Doc. Nos. 36-2, 36-3, 36-4, Doc. No. 36-13 at 20, 22-23). Without market research and with full
knowledge of the appearance of the DUM DUMS bag, Tootsie chose a package with elements that
were nearly identical to that of the DUM DUMS bag. (Doc. No. 36-4; Doc. No. 36-12 at 31-32; Doc.
No. 36-13 at 39, 41, 45-46). Tootsie specifically recognized the similarity between the violators’
color scheme, had multiple other options, and chose to proceed with the similar design anyway.
(Doc. No. 25-1 at 5; Doc. No. 36-13 at 46-47, 61-62). Because Tootsie performed no market
research to advise the rebranding strategy and recognized the similarity between the two packages
when targeting DUM DUMS’ market share, I conclude there is sufficient circumstantial evidence to
find Tootsie acted with the intent to copy.
Balancing the factors, I conclude the amount-of-sales and established-place-in-the-market
weigh strongly in Spangler’s favor. Further, Tootsie intended, at least in part, to copy Spangler’s
long-used DUM DUMS trade dress. Therefore, I conclude there is sufficient evidence to support a
finding of secondary meaning.
2. Functionality
In civil actions for infringement of unregistered trade dress, “the person who asserts trade
dress protection has the burden of proving that the matter sought to be protected is not functional.”
15 U.S.C. § 1125(a)(3). Accordingly, to satisfy this element, Spangler “must show that its design
feature is not ‘essential to the use or purpose of the article’ and that it does not ‘affect[ ] the cost or
quality of the article.’” Leapers, 879 F.3d at 736 (quoting Inwood, 456 U.S. at 850 n.10); see also TrafFix
Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001).
15
But with respect to aesthetic functionality, as is the case here, the burden is “not substantial,”
Leapers, 879 F.3d at 737, requiring only a showing that the “exclusive use of the feature would put
competitors at a significant non-reputation-related disadvantage.” Qualitex, 514 U.S. at 165. In
other words, “[a] design has aesthetic functionality when it communicates the use, purpose, cost, or
quality of the product in a way that competitors cannot avoid replicating without incurring costs ‘not
to copy but to design around.’” Leapers, 879 F.3d at 737 (quoting Abercrombie, 280 F.3d at 643)
(further citation omitted).
The design features at issue here are: (1) a red bag with the brand in white lettering; (2) a
display window in the bag showing suckers within; and (3) a blue and yellow violator indicating the
number of lollipops within the bag. None of these three things are essential to packaging or selling
lollipops. While the color red may serve a purpose, it is not the only color which may be used to
communicate that the package contains lollipops. The same applies to the violator, which could
accurately communicate the number of lollipops within the bag in any color. Finally, the window in
the bag might serve the purpose of communicating what is contained therein. But the same purpose
can be accomplished through other means such as labeling the bag, as evident by the numerous
candy bags that do not possess the window. Therefore, because none of these design elements are
essential to the packaging or sale of lollipops, I conclude the trade dress is not functional.
3. Likelihood of Confusion
The final element asks whether there is “a likelihood of confusion as to the source or origin
of the plaintiff's and defendant's products.” Abercrombie, 280 F.3d at 645. Thus, the “ultimate
question” is “whether relevant consumers are likely to believe that the products or services offered
by the parties are affiliated in some way.” Groeneveld, 730 F.3d at 509 (quoting Daddy’s Junky Music
Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997)) (further citation
omitted). The following eight factors may aid in this determination:
1) strength of the plaintiff's mark, 2) relatedness of the goods, 3) similarity of the
marks, 4) evidence of actual confusion, 5) marketing channels used, 6) likely degree
16
of purchaser care, 7) defendant's intent in selecting the mark, and 8) likelihood of
expansion of the product lines.
Abercrombie, 280 F.3d at 646 (citing Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642,
648 (6th Cir. 1982)) (further citation omitted).
Three of these factors are not in dispute. Tootsie concedes the following factors weigh in
Spangler’s favor: “relatedness of the goods” and “marketing channels used.” (Doc. No. 25 at 23).
Further, both parties agree that the “likelihood of expansion of the product lines” is not relevant
here. As such, five factors remain.
i.
Strength
“The strength of [trade dress] is a determination of the [trade dress]’s distinctiveness and
degree of recognition in the marketplace.” Gray v. Meijer, Inc., 295 F.3d 641, 646 (6th Cir. 2002). As
such, the inquiry depends on: (1) “the uniqueness of the trade dress” and (2) “the investment in
imbuing a trade dress with secondary meaning.” Id. at 647; see also Daddy’s, 109 F.3d at 280 (“A mark
is strong and distinctive when the public readily accepts it as the hallmark of a particular source;
such acceptance can occur when the mark is unique, when it has received intensive advertisement, or
both.”) (internal quotation marks omitted).
Considering the numerous other red bags with similar features in the marketplace of candy,11
the DUM DUMS trade dress is not “unique.” (Doc. No. 26-1). Further, as discussed above, while
DUM DUMS leads the lollipop marketplace, Spangler does not advertise or otherwise promote the
product, an act which would “infuse” the trade dress with meaning. See Gray, 395 F.3d at 647
(“[T]he most mundane packaging may be infused with meaning by advertising and other
11
The CEO of DUM DUMS indicated DUM DUMS competes with all candy, including chocolate, but
testified to competing “more in the non-chocolate space.” (Doc. No. 25-2 at 11). Accordingly,
even if DUM DUMS was the only red bag on the lollipop market, which it is not, the uniqueness of
the DUM DUMS trade dress must be measured against other candy as well.
17
promotional tools, rendering a strong trade dress.”). Therefore, combining both factors, I find the
DUM DUMS trade dress as defined here to be rather weak.12
ii.
Similarity
“In assessing similarity, ‘courts must determine whether a given mark would confuse the
public when viewed alone, in order to account for the possibility that sufficiently similar marks may
confuse consumers who do not have both marks before them but who may have a general, vague, or
even hazy, impression or recollection of the other party's mark.’” Maker’s Mark Distillery, Inc. v.
Diageo N. Am., Inc., 679 F.3d 410, 421 (6th Cir. 2012) (quoting Daddy’s, 109 F.3d at 283) (emphasis
added).
Like the defendant in Maker’s Mark, Tootsie relies substantially on the argument that the two
are distinguishable because of the prominence of the brand name, regardless of the resemblance.
More specifically, the “CHARMS” house mark13 occupies a third of the CHARMS MINI POPS bag.
“[T]he presence of a house mark can decrease the likelihood of confusion” and is “a factor
to be considered in the evaluation of similarity.” Maker’s Mark, 679 F.3d at 422 (citing AutoZone, Inc.
v. Tandy Corp., 373 F.3d 786, 796-97 (6th Cir. 2004)). The significance of a “house mark” is greater
in this type of “palming off” case than one of association amongst related products where “one
might associate with or sponsor the other and still use their own house mark.” Id. The house mark
is especially significant in reducing likelihood of confusion “when one mark…is so easily
recognizable and associated with a strong and popular brand.” Progressive Distrib. Servs., Inc. v. United
12
This conclusion is supported by Spangler’s expert, Mr. Keegan. Keegan testified that he did not
believe an Eveready survey was appropriate in this case even though he agreed that this type of survey
is considered to be “the gold standard in cases involving strong marks.” (Doc. No. 24-2 at 9).
Instead, Keegan decided to perform a Squirt survey, which he has referred to as “the savior of weak
marks,” used when a mark has no “fame.” (Doc. No. 24-5 at 20, 23).
13
A “house mark” is a “product label[ ] identifying the name of the manufacturer.” Maker’s Mark,
679 F.3d at 422; see also 4 McCarthy on Trademarks and Unfair Competition § 23:43 (5th ed. 2018)
(“A ‘house mark’ is a mark used on several different goods or services which themselves use a
particular ‘product mark.’”). Because Charms has been a leading lollipop manufacturer for over 100
years (Doc. No. 25-1 at 2), “CHARMS,” as it appears on the bag here, is treated as the house mark for
purposes of this analysis even though Tootsie is the overhead manufacturer.
18
Parcel Serv., Inc., 856 F.3d 416, 433 (6th Cir. 2017); see also 1 McCarthy on Trademarks and Unfair
Competition § 8:16 (5th ed. 2018); 4 McCarthy on Trademarks and Unfair Competition § 23:53 (5th
ed. 2018).
While the appearance of the two bags are undoubtedly similar when viewed side-by-side, that
is not the question here. See Progressive, 856 F.3d at 432 (“In evaluating whether the mark is similar, a
court should not examine the marks side by side[.]”). Instead, viewing the CHARMS MINI POPS bag
alone, it is clear from the prominent display of the recognizable “CHARMS” house mark that the two
bags are sufficiently dissimilar. Even if the resemblance incites some association with DUM DUMS,
the CHARMS house mark strongly reduces the likelihood of confusion for purposes of this factor.
iii.
Evidence of Actual Confusion
There is no dispute that there have yet to be any actual complaints of confusion. (Doc. No.
25-2 at 8). Instead, to prove actual confusion, Spangler submits as evidence the Squirt survey
conducted by Keegan. But as discussed above, this survey is afforded little weight due to the
methodological errors. See Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 518 (6th Cir.
2007). Therefore, Spangler is unable to show any actual confusion. 14
iv.
Likely Degree of Purchaser Care
As acknowledged by Tootsie, there is a “general proposition that the average customer is
likely not to exercise a high degree of care in purchasing relatively inexpensive and fungible
14
Tootsie introduces two surveys to evince lack of actual confusion. Spangler challenges the
methodology of these surveys. While the merit of these challenges and an analysis of the weight due
to these surveys may be necessary later in this litigation, I do not find it material at this time. Even if
this factor does weigh in Tootsie’s favor, it is not dispositive to the likelihood-of-confusion element.
See Wynn Oil v. Thomas, 839 F.2d 1183, 1188 (6th Cir. 1988) (“In a case where there was no evidence
of actual confusion, the Court of Appeals for the Federal Circuit correctly reasoned that ‘this fact
does not preclude this Court from concluding that there is a “likelihood of confusion”, as actual
confusion is merely one factor to be considered by the Court when it makes its determination.’
Further, because evidence of actual confusion is difficult to produce and frequently discounted as
unclear or insubstantial, ‘this factor is weighted heavily only when there is evidence of past
confusion, or perhaps, when the particular circumstances indicate such evidence should have been
available.’”) (quoting Bandag, Inc. v. Al Bolster’s Tire Stores, Inc., 750 F.2d 903, 914 (Fed. Cir. 1984)).
19
products, such as snack food.” Gray, 295 F.3d at 649-50 (citing cases). Further, “courts have found
that the relative locations of the competing products on store shelves are significant.” Id. at 650. In
this case, Tootsie acknowledges that it “expects to co-exist with DUM DUMS, side-by-side on store
shelves.” (Doc. No. 25-1 at 6; Doc. No. 36-13 at 49-50). Accordingly, applying the logic articulated
in Gray, due to the anticipated proximity on shelves coupled with the fact that lollipop buyers are
unlikely to exercise a high degree of care with selection, this factor weighs strongly in Spangler’s
favor.
v.
Tootsie Roll’s Intent
Unlike secondary meaning, the “intent to copy” “standing alone has no bearing on the
likelihood-of-confusion issue” in a trade dress action. Groeneveld, 730 F.3d at 514. Instead, the
question is whether Tootsie acted with “intent to deceive or confuse.” Id. (citing cases). But
“[c]ircumstantial evidence of copying, particularly the use of a contested mark with knowledge that
the mark is protected, may be sufficient to support an inference of intentional infringement where
direct evidence is not available.” Progressive, 856 F.3d at 436.
Tootsie does not dispute the fact that it knew of DUM DUMS trade dress when designing the
new CHARMS MINI POPS packaging. But “knowledge of a trademark, alone, will not support a
finding of intent to confuse if other circumstances show that the defendant believed there was no
infringement.” Progressive, 856 F.3d at 436 (citing AutoZone, 373 F.3d at 800). That is not the case
here.
Unlike the junior users in Progressive and AutoZone, whose appearances were different than the
senior user,15 Tootsie not only recognized the similarity in the violators’ color scheme and proceeded
to use the design anyway, but also acted with the intent that the two bags sit side-by-side in the
15
See Progressive, 856 F.3d at 436 (“[Junior user] did not believe such prior use would result in a
likelihood of confusion because many companies used similar marks and because the products
appear substantially different.”); AutoZone, 373 F.3d at 800 (“it believed that there was no
infringement given the dissimilarity of the marks and the unrelatedness of the products offered by
each company.”).
20
market place. (Doc. No. 25-1 at 5-6; Doc. No. 36-13 at 46-47, 49-50, 61-62). While Tootsie Roll
alleges the “Shop & Compare” violator along with the CHARMS name evinces an intent to compete
rather than deceive,16 I do not agree. Tootsie admits its consumers spend merely seconds picking
out the package, basing the decision on recognition, possibly without even reading the package.
(Doc. No. 36-13 at 48-49). Further, Tootsie made no attempt to introduce the same competitive
pricing scheme with the old yellow package before investing nearly $1 million in the packaging
redesign and the new product launch. (Doc. No. 25-1 at 6; Doc. No. 36-13 at 55, 59, 62). Finally,
the product redesign process used by Tootsie did not consist of market research and was complete
in a quarter of the time Spangler used to redesign the DUM DUMS trade dress years prior. (Doc. No.
17-2 at 3-4; Doc. No. 36-4; Doc. No. 36-12 at 31-32; Doc. No. 36-13 at 39, 41, 45-46).
Considering all of these facts, I conclude the circumstantial evidence suggests Tootsie
emulated the DUM DUMS trade dress with the intent of diverting business from DUM DUMS through
the similar design. See Daddy’s, 109 F.3d at 286 (“[P]urposeful copying indicates that the alleged
infringer, who has at least as much knowledge as the trier of fact regarding the likelihood of
confusion, believes that his copying may divert some business from the senior user.”).
vi.
Balancing Factors
The DUM DUMS trade dress is not strong and there is no evidence of actual confusion. But
the two companies used the same marketing channels to sell the same product. While the CHARMS
16
Tootsie Roll relies on Groeneveld for this procompetitive argument. But Groeneveld is easily
distinguishable from the case at hand. First, the court found the product design trade dress at issue
in the case to be functional. 730 F.3d 504-09. Second, finding the functional product design had not
been copied with the intent to deceive, Groeneveld relied upon the procompetitive interests served by
giving consumers an alternative option which presumably operated in the same manner as the
original but was simply offered by a different manufacturer. Id. at 511-16; see also 1 McCarthy § 8.5
(distinguishing “product design” from traditional trade dress). Here, the trade dress at issue is not
functional product design but a nonfunction product packaging. Thus, in providing an alternative in
the marketplace, the trade dress alone would not serve the same procompetitive purpose of alerting
the consumer that the product operated in the same manner. As such, this case appears to be more
of a “masquerade” Groeneveld cautioned against than an attempt to “us[e] a functional product's look
to promote a competitive offering.” 730 F.3d at 514-15.
21
MINI POPS trade dress is distinguishable when seen alone, Tootsie intends the product to be sold
side-by-side on the shelf with DUM DUMS, which would increase the likelihood of confusion due to
the low degree of purchaser care. This intent along with other evidence also supports a conclusion
that Tootsie acted with the intent to deceive. Therefore, considering all the factors, I find the
evidence suggests the red CHARMS MINI POPS packaging is confusingly similar to the DUM DUMS
trade dress.
4. Conclusion
Because a jury could reasonably conclude that Spangler has proven all elements of this claim
with the limited evidence available at this early stage in the litigation, “the merits present a
sufficiently serious question to justify further investigation.” In re DeLorean, 755 F.2d at 1230.
Therefore, Spangler has proven success on the merits is not merely possible, but likely.
B.
IRREPARABLE HARM
The second factor of the preliminary injunction standard requires the plaintiff show
irreparable harm is not merely possible, but likely in the absence of preliminary injunction. Winter, 555
U.S. at 22. Harm is irreparable “if it is not fully compensable by monetary damages” or “if the
nature of the plaintiff's loss would make the damages difficult to calculate.” Certified Restoration, 511
F.3d at 550 (quoting first, Overstreet v. Lexington-Fayette Union Cnty. Gov’t, 305 F.3d 566, 578 (6th Cir.
2002), and second, Basicomputer Corp. v. Scott, 973 F.2d 507, 511 (6th Cir. 1992)).
Generally, “in the context of an infringement action, a finding of irreparable injury ordinarily
follows when a likelihood of confusion or possible risk to reputation appears [because] irreparable
injury flows both from the potential difficulty of proof of plaintiff's damages, and also from the
impairment of intangible values.” Wynn Oil Co. v. Am. Way Serv. Corp., 943 F.2d 595, 608 (6th Cir.
1991) (internal quotation marks and brackets omitted). Because Spangler has established a
22
likelihood of confusion, a finding of irreparable harm would generally follow.17 But as Tootsie Roll
argues, when asked to “[s]tate the facts supporting or substantiating Plaintiff’s allegation that is has
been damaged by Tootsie’s use of the accused packaging for its CHARMS MINI POPS product,”
Spangler identified three sources of “known or possible damages” and provided a method of
calculating the monetary value of each. (Doc. No. 25 at 33; Doc. No. 25-5 at 5-6). Spangler fails to
refute, or so much as acknowledge, this argument but continues to argue it will suffer irreparable
harm if Tootsie continues to trade on its goodwill and reputation. (Doc. No. 37 at 18-20).
Since Spangler identified a method of calculating the monetary value of the damages sought,
it is arguable that the policy interests secured by the presumption are not at stake here. But Spangler
is correct in stating the loss of control of its reputation by allowing Tootsie to sell the same product
in the confusingly similar bag would cause irreparable harm since “loss of control over one's
reputation is neither calculable nor precisely compensable.” CFE Racing Prods., Inc. v. BMF Wheels,
Inc., 793 F.3d 571, 596 (6th Cir. 2015) (internal quotation marks omitted); see also Ohio State Univ. v.
Thomas, 738 F. Supp. 2d 743, 756 (S.D. Ohio 2010) (“‘The most corrosive and irreparable harm
attributable to trademark infringement is the inability of the victim to control the nature and quality
of the defendant's goods. Even if the infringer's products are of high quality, the plaintiff can
properly insist that its reputation should not be imperiled by the acts of another.’”) (quoting Processed
Plastic Co. v. Warner Commc’n., Inc., 675 F.2d 852, 858 (7th Cir. 1982)) (further citation omitted).
Accordingly, the damage to Spangler’s reputation and goodwill by allowing Tootsie to continue
selling the CHARMS MINI POPS in the red package is irreparable.
17
Following Wynn Oil II which found a two-year delay did not preclude injunctive relief, I find
Spangler’s months-long delay does not preclude injunctive relief either. See 943 F.2d at 607-08.
Tootsie has not put forth a convincing argument to persuade me otherwise.
23
C.
BALANCE OF EQUITIES
When considering the third factor, “courts ‘must balance the competing claims of injury and
must consider the effect on each party of the granting or withholding of the requested relief.’”
Winter, 555 U.S. at 24 (quoting Amoco Prod. Co. v. Vill. of Gambell, AK, 480 U.S. 531, 542 (1987)).
In this case, Tootsie alleges a preliminary injunction would cause it substantial harm. (Doc.
No. 25-1 at 6-7). First, Tootsie has already invested $1 million in the product redesign and launch
and would have to invest more money and time into a second redesign. Second, Tootsie claims a
second redesign so soon after the first could damage the company’s image as a whole. Spangler
challenges the legitimacy of these claims, stating that since CHARMS MINI POPS are already sold in a
different package at Wal-Mart, the cost would not be as great as Tootsie alleges. (Doc. No. 37 at
21). I agree.
Tootsie has already designed and is using an alternative bag for one of its three nationwide
distributors. (Doc. No. 36-12 at 40, 50-51; Doc. No. 36-13 at 34-35, 59-60). Therefore, while
Tootsie may experience some hardship in repackaging the existing inventory into the white WalMart bags, it would not be burdened with a complete redesign. Because Tootsie’s burden in
transferring inventory to an existing package is substantially less than Spangler’s loss of goodwill and
reputation, this factor weighs in Spangler’s favor.
D.
PUBLIC INTEREST
The final factor reviews the public interest at stake in granting the injunction. Spangler
alleges a preliminary injunction will halt customer confusion in the marketplace. Tootsie claims the
injunction would have a chilling effect on competition. After considering both arguments, I agree
with Spangler. As stated above, I do not find merit in Tootsie procompetitive argument in this case
of aesthetic packaging trade dress infringement. Competition is not threatened if Tootsie continues
to offer CHARMS MINI POPS at the same competitive pricing in the already-existing alternative
packaging. Therefore, this final factor weighs in Spangler’s favor.
24
V.
CONCLUSION
Because all factors discussed above weigh in Spangler’s favor, Spangler’s motion for
preliminary injunctive relief is granted. Additionally, for the reasons stated above, Tootsie’s motion
to exclude expert testimony is granted in part and denied in part.
So Ordered.
s/ Jeffrey J. Helmick
United States District Judge
25
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