A little more than kin: prominent house mark overcomes weak evidence of confusion

KIND LLC v. Clif Bar & Co., 2014 WL 2619817, No. 14 Civ. 770 (S.D.N.Y. June 12, 2014)

KIND sought a preliminary injunction against Clif Bar’s new trade dress for its MOJO bars; the court denied the motion.  KIND defines its trade dress as
(1) packaging with a transparent, rectangular front panel revealing a large portion of the bar itself; (2) a horizontal stripe bisecting the transparent front panel containing the flavor of the bar in text; (3) a text description of the product line (e.g. “Fruit & Nut,” “Plus,” or “Nuts & Spices”) in line with the horizontal stripe bisecting the transparent front panel; (4) a vertical black band, offset to the side of the package, containing a bulleted list of many of the bar’s key healthful attributes; (5) opaque vertical bands, or end caps, at either edge of the product package; and (6) a 40g size, in a slender shape.
KIND bar

KIND also sought to protect “the overall impression of the packaging,” not just those six specific elements, but the court wasn’t having it.  A clear definition of the protectable dress is necessary to allow courts and defendants to know what they’re supposed to be evaluating, and to avoid protecting a look at an improper level of generality.

First, the court determined that the trade dress was neither inherently distinctive nor generic.  Distinctiveness should be evaluated bearing in mind (1) the risk that overextension of trade dress protection could undermine limits on copyright and patent law, and (2) that trade dress doesn’t protect an idea, a concept, or a generalized type of appearance.  KIND understandably cited the old Landscapelanguage that “the varieties of labels and packaging available to wholesalers and manufacturers are virtually unlimited [so] a product’s trade dress typically will be arbitrary or fanciful and meet the inherently distinctive requirement for § 43(a) protection.”  But KIND’s own “very common packaging design” wasn’t inherently distinctive.  Nor was it generic—the combination of the six elements wasn’t a “singular custom in the industry.”
Running through the evidence, many food bars use one or more of the six elements KIND sought to protect: transparent packaging, horizontal banners with product/flavor descriptions, product attributes along one side of front panel, 40 gram size, and opaque end caps.  Many of these were also common in the food industry in general. Most of these elements also served functional purposes—the transparent window reveals the bar within; the text description informs consumers of the bar’s ingredients, etc.—and this also weighed against finding the trade dress protectable. These elements, either individually or together, just didn’t identify source.  The KIND logo wasn’t included in the claimed trade dress.  (And its two registrations for its packaging differed from that claimed here, most notably by including “KIND.”)  All the elements it sought to protect here instead described its product, particularly the most prominent feature: the transparent, rectangular front panel.  Likewise the text description and the 40g size in a “slender shape”; the horizontal stripe bisecting the transparent front panel contained the flavor, and the vertical black band contained “a bulleted list of many of the bar’s key healthful attributes.”  The opaque end caps might not seem descriptive at first, but they sometimes reflected the bar’s flavor or featured plus signs to show that the bar was part of KIND’s “Plus” line.
So, could KIND show secondary meaning?  Relevant factors: (1) advertising expenditures, (2) consumer studies linking the dress to the source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the dress, and (6) length and exclusivity of the trade dress’s use.  KIND failed to meet its heavy burden of showing secondary meaning.
MOJO bar

The court found evidence that Clif Bar did deliberately copy elements of the KIND trade dress, making factor (5) favor KIND.  Sample statements: an email recapping a MOJO redesign meeting stated that “[e]veryone also agreed that Kind is a best in class packaging that we should learn from for MOJO,” with a “[l]arge product visual with clear window”; “[g]ood branding (KIND)” (although that wasn’t part of the trade dress at issue here); “[c]laims on front panel (not wrapped); and “[g]ood flavor communication claim.”  Another internal document said that KIND had an “advantage” in packaging because of its “large clear window” and because its “claims are clearly indicated on the front wrapper”; an email instructed a team member to “[b]ring multiple KIND bars” to a MOJO redesign meeting; a presentation indicated that one “packaging objective[ ]” was to “[c]ompete head-to-head with Kind” by incorporating a “[l]arger window to showcase bar with whole pieces of fruits & nuts,” a “[s]imilar window shape & coloring to Kind.”  At one point a brand manager said that the MOJO packaging was “now too close to KIND.”

That wasn’t enough to show secondary meaning, though.  Since launch, KIND had spent more than $100 million on marketing and advertising, had sold $600 million dollars’ worth of KIND bars, had received extensive unsolicited media coverage, and all KIND bars allegedly shared the six elements at issue.  However, KIND didn’t show that these sales/ads/etc. resulted in consumers associating these six elements with KIND, in the absence of the logo.  Even four ads featuring KIND bars without the logo displayed the logo elsewhere on the ad. Thus, the court couldn’t determine whether secondary meaning existed in these elements, or the logo, or the logo plus the six elements.
While “intentional copying constitutes persuasive evidence of consumer recognition, conscious replication alone does not establish secondary meaning.” (Otherwise competitors would hesitate to copy good, descriptive ideas.)
Though it wasn’t necessary, the court ran through the confusion factors as well. 
Strength of the trade dress: the court found it to be weak—descriptive, and without secondary meaning.  The commercial context also mattered: many food bars used the six elements, either individually or some in combination, which additionally undercut the strength of the trade dress and “indicate[d] that its claim is pitched at an improper level of generality.”  KIND’s CEO even testifed that the Think Thin Crunch bar “may arguably be infringing” as well, but most of the six elements at issue didn’t appear on its trade dress—the only similarities were the transparent window and the opaque end caps.  This was impermissibly seeking protection for “a generalized type of appearance.”
Similarity: Though the trade dresses shared some similar elements, the overall impression differed significantly, weighing against KIND.  KIND’s witness explained that packaging can be divided into two types, one that emphasizes straight lines and minimizes curvature, and the other that has or emphasizes curvature. Jargon ahoy: KIND’s trade dress is best described as “minimalist,” “simple,” “clean,” “modern,” and “sleek,” connecting with its brand concepts of integrity and simplicity.  It uses straight lines.  The MOJO trade dress has a different color scheme, fonts, and number and placement of design elements; it’s embellished rather than minimalist; and it uses curves in the large curved “J” of MOJO, the cursive font used to describe the product-line, and the mountain displayed along the bottom of the packaging.  Its movement/mountain imagery “connects with the core concepts” of the Clif Bar/MOJO brands.
Also, the prominent use of MOJO and the Clif Bar mark, which has 87% aided awareness, tended to dispel any confusion.  See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1046 (2d Cir. 1992) (house brands can prevent confusion).  KIND argued that the Bristol-Myers rule didn’t apply because the Clif marks weren’t prominent enough and weren’t universally recognized, and because the KIND trade dress was remembered better than the name. The court disagreed: the marks didn’t have to be the most prominent part of the trade dress to dispel confusion, and anyway MOJO was the second most prominent feature after the transparent window.  Also, the evidence didn’t show general consumer recognition of KIND bars only through the six claimed elements.
Competitive proximity favored KIND; there was no gap to bridge.
Actual confusion evidence was weak; its absence wouldn’t weigh against KIND because the product was new to the market.  This factor weighed slightly in KIND’s favor:  There were dueling surveys and some anecdotal evidence.
KIND’s survey found 15% net confusion.  This was “on the lower end of rates that courts within this Circuit have found sufficient to show actual confusion.”  True, in the bad old days some courts accepted gross rates of 15% without control groups, but that was before courts understood consumer survey evidence. 
Plus, Clif Bars’ expert credibly testified that the KIND survey was flawed because it only measured whether there was confusion, not what caused it.  When there is a multi-element trade dress, it’s vital to understand what causes the problem.  But the control had none of the elements.  Thus, the survey may have underestimated noise/overestimated confusion.  The survey respondents were asked: “Do you think this brand of [snack bars] is or is not made by or made with the approval or sponsorship of the same company that makes the [corresponding type of product] you saw in the earlier photo?” Yes-sayers got follow-ups, and the verbatim responses to “What makes you say that?” and “Anything else?” questions proved Clif Bars’ point.  Some responses cited the similar packaging; other responses cited the similar flavors of the KIND and MOJO bars (e.g., “They have the same flavors, and are both healthy snack bars”; “Fruit and nut was on most of the packaging with the exception of the chocolate bar I believe. Looks like a higher quality of the same bars”; “They had the exact same titles for each of the different bars”); others cited both packaging and flavors; and others just completely whiffed (e.g., “These are very nice packages and I was looking for a special Valentine gift along these lines anyway, so it is exciting to encounter new products with better ingredients”; “I think this would be in every store and people would love to buy them.”).  Thus, the court gave little weight to the survey.
The anecdotal evidence of confusion involved one customer who thought the MOJO bar he’d selected was a KIND bar, but he had “no clue” about the bar he selected, and told the interviewer he was looking for a KIND bar because his daughter told him to buy it.  Since “the correct test is whether a consumer who is somewhat familiar with the plaintiff’s [dress] would likely be confused when presented with defendant’s [dress] alone,” this didn’t matter.  Another potential consumer who shared an apartment with a KIND employee, selected a MOJO bar, believing it to be a KIND bar, from a bowl of snacks in her apartment. But this confusion might have resulted from her expectation that she’d find KIND bars in her home because of her roommate’s employment. That wasn’t probative of the average consumer in marketplace conditions.
KIND also relied on social media post, but the court found them “mostly unhelpful.”  Comments on Clif Bar’s Facebook posts noted similarities between the bars, e.g., “I love all things Clif and I’m sure I’ll like these too, but don’t they kinda look like Kind bars?”  But assertions of similarity don’t establish confusion.  One tweet said, “I was about to pick up one of those [MOJO bars] because I thought it was a Kind Bar at the vitamin shop ….,” and that did suggest actionable initial interest confusion.  (Argh!  Confusion remedied before the consumer even takes physical action should not count.  That’s just initial attention. There are no sunk costs making this like bait and switch.)  But the overall evidence of actual confusion was weak.
Bad faith: the evidence didn’t show an intent to deceive consumers into believing that the MOJO bar was made or sponsored by KIND, and thus this factor weighed in favor of Clif Bar.  Intent to compete by imitating is vastly different from an intent to deceive.  The prominent display of the MOJO/Clif Bar marks and dissimilarity to KIND’s minimalist trade dress negated any inference of intent to deceive.
Quality: no evidence; no one cares.
Buyer sophistication: About half of retail outlets sell KIND bars in a “primarily impulse” setting, but over three-quarters of its sales volume comes from frequent purchasers who eat a bar several times a week or more.  Some buyers are casual and some careful. The court gave this factor little weight.
The court also identified other marketplace factors that favored Clif Bar.  Here, the “caddies” or “inner cases” in which these products are often sold, and the point of sale displays Clif Bar has provided retailers, all prominently bore the MOJO and Clif marks, thus dispelling confusion.  In addition, many MOJO and Clif bars are sold through mass market and grocery stores, where MOJO bars are often grouped with other Clif Bar products and KIND bars are often grouped with other KIND products.
Balancing the factors, no confusion was likely. Thus there was no irreparable harm. 
Under the alternate standard for preliminary relief (assuming it survives eBay), KIND also failed.  Clif Bar alleged sunk costs for the new MOJO products of $13.9 million, including inventory ready to ship and already shipped; “contracted ingredient and marketing commitments; R & D development costs; the cost of sales kits, merchandising shippers, plan-o-grams and reset work; and the forecasted loss of sales from Clif Bar products discontinued to make room for new CLIF MOJO products on the shelf.”  KIND’s proposal for a three-month sell-off period would reduce losses only as to the first category.  It would cost Clif Bar approximately $500,000 and take eight months to develop and manufacture new packaging, with a loss of $10 million in revenue during that period, with consequent harm to brand loyalty and reputation while it couldn’t fulfill its commitments.  While KIND argued that ingredients could be repurposed and that a new design would only take three months, KIND’s irreparable harm was premised on KIND’s alleged loss of goodwill and market share through confusion, which wasn’t sufficiently shown, so it couldn’t meet its burden of showing that the balance of harms tipped decidedly in its favor.
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