wrapping lighters in prismatic foil from The Diffraction Company is protectable. I disagree.
In the Third Circuit, a design is nonfunctional, and therefore entitled to trademark protection, if the design is not significantly related to the utilitarian function of the product, but is merely arbitrary. Standard Terry Mills, 803 F.2d at 781; Paraflex Industries, 653 F.2d at 825. Put another way, "proof of nonfunctionality generally requires a showing that the element of the product serves no purpose other than identification." Premo Pharmaceutical, 625 F.2d at 1063.
Some Circuits have taken a broad view of functionality. The Ninth Circuit held that "if the particular feature is an important ingredient in the commercial success of a product, the interest in free competition permits its imitation in the absence of a patent or copyright." Pagliero v. Wallace China Co., 198 F.2d 339, 343 (9th Cir. 1952).
The Third Circuit has a narrower view of functionality than the Ninth Circuit, requiring that the design feature be related to the utilitarian function of the product. Paraflex Industries, 653 F.2d at 825. "When the design itself is not significantly related to the utilitarian function of the product, but is merely arbitrary, then it is entitled to protection as a design trademark if it has acquired the distinctiveness necessary to achieve a secondary meaning." Id. This Circuit rejected the broader view because it provided a disincentive for the development of imaginative and attractive design. Under the broader view, "the more appealing the design, the less protection it would receive." Id.
Second Earth asserts that the function of the wrapped lighters is essentially the same as the unwrapped lighters -- that is, to ignite material, whether it be a cigarette, barbeque, or other substance. Therefore, Second Earth argues that the prismatic foil is nonfunctional when used to wrap a lighter because the prismatic foil does not aid in the utilitarian function of the lighter. I disagree.
The use of the prismatic foil on the lighters is functional for several reasons. First, the prismatic foil is directly related to the commercial success of the product and therefore is not used solely for the purpose of identification. The use of the prismatic foil allows a wrapped lighter to be sold for much more than the price of an unwrapped lighter, dramatically increasing the profit margin.
Second, Second Earth has stipulated that the use of the prismatic foil to wrap the lighters is not arbitrary. Third, the prismatic foil is related to the utilitarian function of the product. As Mr. Seiver testified, the foil causes the wrapped lighter to "light up." The foil takes white light and breaks it into its colored components, thus providing a function separate from igniting a flame.
The rationale and rule of Paraflex Industries protects imaginative and attractive design. Second Earth does not seek protection for a design, but rather seeks protection for the use of The Diffraction Company's prismatic foil to wrap disposable lighters and pens. Indeed, Second Earth has stipulated that it has employed over fifteen different Diffraction Company foil patterns on the wrapped lighters and pens. Therefore, a finding of functionality does not provide a disincentive for the development of imaginative and attractive design. See Paraflex Industries, 653 F.2d at 825. Furthermore, the prismatic foil and the foil designs were created by The Diffraction Company which was not named as a party to this action.
2. Secondary Meaning
Although a finding of functionality is by itself enough to find that there is not a reasonable probability of success on the merits, I also find that Second Earth did not establish secondary meaning or the likelihood of confusion at the point of sale.
"To establish secondary meaning, 'a manufacturer must show that, in the minds of the public, the primary significance of the product feature or term is to identify the source of the product rather than the product itself.'" Freixenet, S.A. v. Admiral Wine & Liquor Co., 731 F.2d 148, 152 (3d Cir. 1984), quoting Inwood laboratories v. Ives laboratories, 456 U.S. 844, 851 n.11, 72 L. Ed. 2d 606, 102 S. Ct. 2182 (1982). In determining the existence of secondary meaning, the Court may consider factors such as length of use, buyer association, extent of sales and advertising, and the fact of copying. Id.
Second Earth has established only that it manufactured products wrapped in prismatic foil from The Diffraction Company for approximately one year before the Pennsylvania Defendants entered the market with a nearly identical product. Second Earth was never the sole manufacturer of lighters wrapped in prismatic foil, and the defendants copied only the functional features. The defendants did not copy the plaintiff's trade-names or service mark. The record is devoid of any evidence of advertising to the public or buyer association. The record has only minimal evidence of the extent of sales. As a whole, the record fails to support a finding of secondary meaning.
3. Likelihood of Confusion
To establish a likelihood of confusion, Second Earth must show that members of the consuming public are likely to confuse the source of the product bearing the imitated feature. American Greetings, 807 F.2d at 1141. Second Earth may not establish a likelihood of confusion solely by showing deliberate imitation. American Home Products, 834 F.2d at 371.
Second Earth has made no showing that the consuming public would be confused at the point of sale. When the lighters or pens are sold, they are in blister cards or in packages with header cards that clearly display the name of the product. There is a paucity of evidence that a concerned consumer would reasonably assume the various products, sold under different trade names, were manufactured and sold by the same company.
Because the wrapped lighters are nearly identical, and none of the lighters are individually labelled by the parties, the possibility of post sale consumer confusion exists. However, with a disposable novelty product which the parties have decided not to individually label, the Court does not consider the possibility of post sale confusion to be a significant factor.
Second Earth has failed to establish the elements of a trade dress infringement action; therefore, it has not established a reasonable probability of success on the merits.
B. Irreparable Harm
In addition to showing a reasonable probability of success on the merits, Second Earth is required to show that it would be injured irreparably if the defendants were permitted to continue marketing wrapped pens and lighters pending a final hearing. See Premo Pharmaceutical, 625 F.2d at 1066.
Second Earth presented no credible evidence of irreparable harm pending a final hearing. Apparently, Second Earth places great reliance on a presumption of irreparable harm created by a showing of a likelihood of success on the merits. Custom Decor, Inc. v. Nautical Crafts Inc., 502 F. Supp. 154, 157 (E.D. Pa. 1980). However, even with such a presumption, the movant is still required to make some affirmative showing of irreparable injury. Triangle Publications, Inc. v. Sports Eye, Inc., 415 F. Supp. 682, 684-85 (E.D. Pa. 1976).
In this case I find that Second Earth failed to establish irreparable harm pending a final hearing. Apart from failing to establish a presumption of irreparable injury by showing a reasonable probability of success on the merits, Second Earth failed to present any credible affirmative evidence of such injury.
IV. DUE PROCESS
Second Earth requests that this Court preliminarily enjoin the defendants from selling lighters or pens wrapped in prismatic foil manufactured by The Diffraction Company. I note that this relief may conflict with the Constitutional constraints of due process since The Diffraction Company is not a party to this action.
"The essence of due process is the requirement that 'a person in jeopardy of serious loss [be given] notice of the case against him and opportunity to meet it.'" Mathews v. Eldridge, 424 U.S. 319, 348, 47 L. Ed. 2d 18, 96 S. Ct. 893 (1976), quoting Joint Anti-Fascist Comm. v. McGrath, 341 U.S. 123, 171-72, 95 L. Ed. 817, 71 S. Ct. 624 (1951) (Frankfurter, J., concurring). Granting the relief requested by Second Earth would prevent the defendants from buying prismatic foil from The Diffraction Company, while leaving them free to continue marketing lighters and pens wrapped in prismatic foil manufactured by another company. While injunctive relief may effect non-parties, due process questions are raised when the requested relief would, as in this case, impact most on a non-party.
For the foregoing reasons, Second Earth's Motion for a Preliminary Injunction is denied.
An appropriate Order follows.
AND NOW, to wit, this 6th day of March, 1989, upon consideration of the Motion of the plaintiffs, Second Earth Enterprises, Inc., and Mark C. Seiver, t/a Second Earth and Second Earth Enterprises, for a Preliminary Injunction, and the responses of defendants Allstar Product Marketing Company, Alan Dorfman, Unique World of Merchandise, Budd-Lin International, Inc., Innovative Touch, Inc. and Charles A. Budd, Jr., and after a hearing, IT IS ORDERED that the Motion of the plaintiffs for Preliminary Injunction is denied.