Plaintiff Perfect Fit Industries, Inc. ("Perfect Fit") appeals from a judgment of the United States District Court for the Southern District of New York, Constance Baker Motley, Judge, entered for defendant Acme Quilting Co., Inc. ("Acme") after a bench trial, in this action for trade dress infringement brought under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1976), and the New York law of unfair competition. The amended complaint charged that Acme deliberately copied the trade dress which Perfect Fit had created for a new line of mattress pads. The district court agreed that there was deliberate copying, but denied relief on the ground that Perfect Fit had not shown that its trade dress had acquired secondary meaning. Since we conclude that on the facts shown, Perfect Fit was entitled to an injunction under New York law, we reverse in part and remand so that the district court may enter an injunction against further use of the infringing materials.
Perfect Fit and Acme have manufactured and sold mattress pads for many years. Until several years ago, two styles of mattress pads were offered: in one style, the padding covered only the top of a mattress, and was to be fastened to the mattress by elasticised anchor bands; the other style was a contour-fitted pad in which, again, the padding covered only the top of the mattress, but was fastened to the mattress by netting on the four sides. These two types were usually packaged for sale in printed plastic bags. In May 1976, Perfect Fit introduced a new type of mattress cover which it called "BedSack," and which was contour-fitted and fully quilted — i. e., the padding covered the top and the four sides of the mattress.
Perfect Fit also designed new packaging for its new product. Instead of the printed bag, it used a clear plastic bag into which was inserted a printed piece of cardboard, called a J-board. The bottom portion of a J-board bends to a 90-degree angle over the end of the packaged product so that a portion of the board is visible to the prospective purchaser whether the packages are laid end-to-end on a table or stacked on a shelf. The dominant feature of the BedSack J-board is a "high fashion" photograph of a blonde woman in night clothes, lounging at the head of a bed covered by a BedSack mattress pad. The photograph has a brown background, and is surrounded by an "art deco" frame in silver and gold, with a thin white border between the two colors. At the top of the frame there is a white BedSack logo in distinctive type face.
The BedSack was a popular success, and Perfect Fit's sales rose as a result. In the words of Acme's counsel at trial, "The product was hot."
Approximately four months after the BedSack was brought to market, Acme introduced its own contour-fitted, fully-quilted mattress cover, which it called "BedMate."
Perfect Fit commenced suit on April 26, 1977. Its amended complaint, filed October 19, 1977, claimed that Acme's BedMate J-board infringed Perfect Fit's common law rights in its trade dress — specifically, in the BedSack J-board — and constituted a false designation of origin under § 43(a) of the Lanham Act.
At trial, Perfect Fit introduced evidence that Acme had deliberately copied Perfect Fit's J-board. The graphic artist hired by Acme testified, inter alia, that he had initially produced several designs of a J-board, none of which was acceptable to Acme; that an officer of Acme then gave him a Perfect Fit BedSack J-board, whereupon he designed the first BedMate J-board used by Acme; that in Acme's view the colors of this first J-board were not quite right, and that he thereupon designed the second J-board adopted by Acme, the colors of which were chosen by Acme and were closer to the colors of Perfect Fit's J-board; that he selected the type face for the Acme J-board from a book displaying one or two hundred type faces, and that his selection might have been a subconscious reaction to seeing the Perfect Fit J-board.
Perfect Fit also sought to prove that the BedSack J-board had acquired secondary meaning. This proof consisted solely of evidence of BedSack sales and advertising expenditures. No consumer surveys were offered, and no evidence was presented as to any instance in which a consumer actually mistook the BedMate for the BedSack.
After trial, the district court found that Perfect Fit's trade dress was "distinctive and memorable," and that the BedSack had become "very popular." It also found that Perfect Fit's and Acme's J-boards were "very similar," and "that Acme deliberately copied the insert being used by Perfect Fit." However, the court concluded that secondary meaning was a necessary element of a claim for relief under either § 43(a) or New York law, and found that Perfect Fit had failed to meet its burden of proof on the question of secondary meaning. The district court concluded:
Thus, the district court entered judgment for Acme. This appeal followed.
We conclude that under New York law, Perfect Fit was not required to prove secondary meaning in order to obtain relief from Acme's infringing trade dress. We also find that Perfect Fit made a sufficient showing of likelihood of confusion to warrant injunctive relief, but that it did not demonstrate entitlement to any other relief. We do not reach any of the other issues raised by the parties.
Secondary meaning was originally a trademark concept designed to limit the extent to which a manufacturer could monopolize words and symbols that are useful in describing products. The doctrine holds
When a manufacturer employs marks that are not descriptive, however, there is less need to prevent their monopolization, for there is an unlimited number of non-functional words and symbols available for use by later comers in the marketing of their products. Similarly, monopolization is not a problem in the realm of trade dress, because the possible varieties of advertising display and packaging are virtually endless. Thus, in this area New York law has concerned itself principally with whether or not the public is likely to be confused, rather than with whether the first comer's trade dress has acquired secondary meaning. See Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251, 258 (2d Cir.), cert. denied, 371 U.S. 910, 83 S.Ct. 253, 9 L.Ed.2d 170 (1962); Avon Periodicals Inc. v. Ziff-Davis Publishing Co., 282 App.Div. 200, 122 N.Y.S.2d 92 (1953), aff'g 27 Misc.2d 160, 113 N.Y.S.2d 737 (Sup.Ct.1952); see also Noma Lites, Inc. v. Lawn Spray, Inc., 222 F.2d 716 (2d Cir. 1955); International Latex Corp. v. Flexees, Inc., 281 App.Div. 363, 119 N.Y.S.2d 409 (1953); Pharmaceuticals, Inc. v. United Whelan Corp., 22 Misc.2d 532, 197 N.Y.S.2d 22 (Sup.Ct.1959).
The teaching of these cases is that, in certain circumstances under New York law, an injunction will issue against confusingly similar trade dress, even though no secondary meaning is shown. In Feathercombs, for example, this Court stated as follows:
306 F.2d at 257-58. See also Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774 (2d Cir. 1964), cert. denied, 380 U.S. 913, 85 S.Ct. 899, 13 L.Ed.2d 799 (1965), in which this Court held that the defendant's use of the plaintiff's trademark constituted unfair competition despite the invalidity of the mark and despite the conclusion that the mark had not acquired secondary meaning:
Id. at 781-82.
In the present case, by dint of its own skill, efforts and expenditures, Perfect Fit had gained a commercial advantage over Acme. The district court found that Perfect Fit's trade dress was distinctive and memorable, and that the BedSack had become very popular. Acme clearly sought to nullify Perfect Fit's advantage by copying its trade dress. The finding that Perfect Fit had failed to show that its dress had acquired secondary meaning, therefore, should not have foreclosed inquiry into whether the public was likely to be confused by the similarity of the trade dresses.
In assessing the likelihood of confusion to the public, an important factor is whether or not the second comer created the similar trade dress intentionally. If there was international copying the second comer will be presumed to have intended to create a confusing similarity of appearance and will be presumed to have succeeded. RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1060 (2d Cir. 1979); Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 281 F.2d 755, 758-59 (2d Cir. 1960); American Chicle Co. v. Topps Chewing Gum, Inc., 208 F.2d 560, 562-63 (2d Cir. 1953); G. H. Mumm Champagne v. Eastern Wine Corp., 142 F.2d 499, 501 (2d Cir.), cert. denied, 323 U.S. 715, 65 S.Ct. 41, 89 L.Ed. 575 (1944); My-T Fine Corp. v. Samuels, 69 F.2d 76, 77 (2d Cir. 1934); Bristol-Myers Co. v. Approved Pharmaceutical Corp., 149 U.S.P.Q. 896 (N.Y.Sup.Ct.1966); Restatement of Torts § 729, comment f (1938).
In American Chicle Co. v. Topps Chewing Gum, Inc., supra, Judge Learned Hand stated as follows:
208 F.2d at 563. Judge Hand went on to quote from the Restatement of Torts, supra, which comments as follows:
In the present case, the evidence and the district court's findings compel the conclusion that Acme's BedMate J-board was likely to confuse the public.
On the present record, therefore, Perfect Fit is entitled to injunctive relief against further use of the offending J-boards by Acme.
At the same time, it is clear that Perfect Fit did not make out a case for monetary relief. There was no showing at trial that the similarities in trade dress resulted in actual confusion of consumers. Perfect Fit offered to prove that various retailers had confused BedSack with BedMate, advertising the latter while showing a picture of the former, or advertising the latter and seeking reimbursement therefor from Perfect Fit. These offers were properly rejected since none of the proffered exhibits involved the use of the J-boards or the J-board designs, and there was no proof that the retailers' confusion derived from the similarity of the J-boards. Even had Perfect Fit adduced admissible evidence of confusion on the part of retailers, however, such evidence would not have shown actual confusion of the public but only the likelihood of such confusion. In the absence of proof of actual confusion of consumers, Perfect Fit is not entitled to damages or an accounting. G. H. Mumm Champagne v. Eastern Wine Corp., supra.
Accordingly, we affirm so much of the district court's decision as denied the claim for an accounting and damages, but reverse the judgment dismissing the complaint and remand so an injunction may be entered.
Perfect Fit does not assert in this proceeding any claim of trademark infringement with respect to its mark BedSack, any claim of copyright infringement with respect to its J-board, or any claim of product simulation with respect to the mattress pads themselves.