Summary
Philip Morris sought a preliminary injunction against Star Tobacco, alleging that Star's GUNSMOKE cigarette trade dress infringed the MARLBORO trade dress under the Lanham Act and violated New York's anti-dilution statute. The court analyzed the Polaroid likelihood-of-confusion factors and concluded that Philip Morris had demonstrated a likelihood of success on its Lanham Act trade dress claim, based in part on the similarity of the Western-themed imagery and evidence of intentional copying. The excerpt addresses irreparable harm but ends before the court's final disposition is visible.
Topics
Practice areas
Questions Presented
- Whether Philip Morris's Western-themed MARLBORO packaging and advertising constituted protectible trade dress under § 43(a) of the Lanham Act without proof of secondary meaning.
- Whether Star's GUNSMOKE packaging and advertising created a likelihood of consumer confusion under the Polaroid factors.
- Whether the likelihood of confusion established the irreparable harm required for a preliminary injunction.
- Whether Philip Morris demonstrated entitlement to preliminary injunctive relief under New York General Business Law § 368-d.
- What security was required under Federal Rule of Civil Procedure 65(c).
Holdings
- Philip Morris's Western-themed MARLBORO trade dress was inherently distinctive and nonfunctional, and therefore protectible under § 43(a) of the Lanham Act without proof of secondary meaning.
- Philip Morris demonstrated a likelihood of consumer confusion between the MARLBORO and GUNSMOKE trade dresses and therefore demonstrated a likelihood of success on its Lanham Act trade-dress infringement claim.
- The demonstrated likelihood of confusion established the requisite likelihood of irreparable harm for preliminary injunctive relief.
- Philip Morris demonstrated entitlement to a preliminary injunction under New York General Business Law § 368-d.
- Philip Morris was required to post a $5 million bond as security for the preliminary injunction.
Key quotations
“"Trade dress" is a form of mark protectible under § 43(a)(1).” (383)
“"Only nonfunctional, distinctive trade dress is protected under § 43(a)."” (383)
“I conclude that Philip Morris has demonstrated the likelihood of succeeding on its Lanham Act claim that the trade dress designed by Star for GUNSMOKE cigarettes infringes upon the trade dress of MARLBORO cigarette.” (388)
“For the foregoing reasons, plaintiffs motion for a preliminary injunction is granted.” (389)
Factual background
Philip Morris marketed MARLBORO cigarettes for decades using a Western-themed trade dress centered on cowboys, the Marlboro Man, Marlboro Country, red packaging, and related advertising. Star began marketing GUNSMOKE cigarettes using a Western-themed package and advertising featuring a cowboy, the phrases "western blend," "New Man in Town," and, in one advertisement, "Gunsmoke Country." Star's president acknowledged awareness of MARLBORO's Western motif and characterized GUNSMOKE as a competitor of MARLBORO. Philip Morris alleged that Star deliberately sought to benefit from consumer associations with MARLBORO's trade dress.
Procedural history
Philip Morris filed an action asserting Lanham Act trade-dress infringement and false-advertising claims, common-law palming-off claims, and a New York anti-dilution claim. It moved for a preliminary injunction, relying on the trade-dress infringement and anti-dilution claims. The district court granted the motion and required a $5 million bond.