Summary
The Eleventh Circuit reviewed a dispute over whether Kraft’s Polar B’ar packaging infringed the trade dress of Isaly’s Klondike bar under § 43(a) of the Lanham Act. The court affirmed the district court’s findings that the Klondike trade dress was inherently distinctive, primarily nonfunctional, and confusingly similar to Kraft’s packaging. The court also upheld the determination that Kraft intended to benefit from the goodwill associated with the Klondike trade dress.
Topics
Practice areas
Questions Presented
- Whether Kraft's Polar B'ar packaging infringed Isaly's protectable trade dress under § 43(a) of the Lanham Act.
- Whether the district court clearly erred in finding inherent distinctiveness, nonfunctionality, and likelihood of confusion.
- Whether Isaly's delay in suing barred relief under laches.
- Whether the injunction improperly prohibited Kraft from using a polar bear image and the color royal blue.
- Whether the appellate court could determine Isaly's entitlement to damages when the district court had reserved damages proceedings.
- Whether Kraft's long nonuse of the Polar B'ar trademark constituted abandonment requiring cancellation despite Kraft's later resumption of use.
Holdings
- Trade dress under § 43(a) is protectable when it is inherently distinctive or has acquired secondary meaning, is primarily nonfunctional, and is confusingly similar to the defendant's trade dress. Isaly's Klondike trade dress satisfied those requirements.
- Inherently distinctive trade dress may be protected under § 43(a) without proof of secondary meaning.
- The district court did not clearly err in finding a likelihood of confusion based on the totality of the relevant factors; dissimilar word marks do not preclude confusing similarity when the overall trade dress is similar.
- The district court did not abuse its discretion in rejecting Kraft's laches defense.
- The district court did not abuse its discretion by prohibiting Kraft from using a polar bear image on the wrappers or trays of its five-ounce chocolate-covered ice cream bars.
- The injunction broadly prohibiting Kraft from featuring royal blue on a textured foil wrapper was overbroad and had to be narrowed to prohibit only uses that caused confusing similarity to the Klondike trade dress.
- The appellate court would not decide whether Isaly was entitled to monetary relief because the district court had not clearly resolved that issue and damages proceedings had been reserved.
- A trademark abandoned through prolonged nonuse may be cancelled even if the registrant resumes commercial use after abandonment; subsequent use does not retroactively revive the abandoned registration.
Key quotations
“to prevail on a trade dress infringement claim under § 43(a), the plaintiff must prove three elements: 1) its trade dress is inherently distinctive or has acquired secondary meaning, 2) its trade dress is primarily non-functional, and 3) the defendant’s trade dress is confusingly similar.” (1535)
“The actual wrapper may be functional, but its appearance is not.” (1538)
“With this standard in mind, we hold that the district court’s order is overly broad.” (1549)
“Irrespective of whether a competitor has used the mark in question, a registered trademark, once abandoned, may be cancelled even after the holder resumes use of the mark.” (1551)
Factual background
Isaly sold five-ounce, stickless, chocolate-covered ice cream bars under the Klondike mark in packaging featuring pebbled silver foil, blue and white coloring, a polar bear, a sunburst, and distinctive graphics. Kraft previously distributed Klondike bars in Florida, then developed the substantially similar Polar B'ar product after Isaly rejected Kraft's proposals to acquire Isaly or package Klondike bars under Kraft's Sealtest name. Kraft supplied its designers with Klondike packaging samples and adopted packaging using several similar features, including silver foil, a polar bear, six-pack trays, and transparent overwrap.
Procedural history
Ambrit's predecessor, Isaly Company, sued Kraft after Kraft introduced the Polar B'ar ice cream bar and allegedly copied aspects of the Klondike bar's packaging. The district court found trade dress infringement, trademark infringement, and false designation of origin, rejected laches, entered injunctive relief, and reserved damages. The Eleventh Circuit affirmed the infringement findings and rejection of laches, held the royal-blue injunction overbroad and remanded for narrowing, reversed the refusal to cancel Kraft's abandoned trademark registration, and remanded the damages-entitlement issue.
Remand instructions
The district court must tailor a narrower injunction concerning Kraft's use of royal blue so that it prohibits only use causing confusing similarity to the Klondike trade dress. The district court must also determine whether Isaly is entitled to monetary relief and address the damages issues reserved below. The refusal to cancel Kraft's Polar B'ar trademark registration is reversed.