Annalee v. Caldor

• Court: District Court, D. New Hampshire
• Decided: April 14, 1995
• Docket: CV-95-175-M
• Status: Published

Opinion

Annalee v. Caldor CV-95-175-M 04/14/95 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Annalee Mobilitee Dolls, Inc., Plaintiff,

v. Civil No. 95-175-M

The Caldor Corporation and C.R. Seasons Ltd., Defendants.

O R D E R

Plaintiff Annalee Mobilitee Dolls, Inc. ("Annalee")a is

suing The Caldor Corporation and C.R. Seasons Ltd. for trademark

infringement, misappropriation, and unfair competition pursuant

to 15 U.S.C. §§ 1114 and 1125(a), NH RSA 358-A, and the common

law. Before the court is Annalee's reguest for a temporary

restraining order preventing defendants from infringing on its

trade dress and trading on its good will. As explained below,

plaintiff's reguest is necessarily denied.

I. BACKGROUND

Annalee, a New Hampshire corporation, has manufactured dolls

under the "Annalee" trademark since 1936. Annalee specializes in

designing, producing, and marketing collectible, posable,

decorative dolls formed of "soft felt-like materials over stuffing filled wire forms." Annalee dolls have a distinctive

"collocation" of features including painted-on faces and

commercial or furrier stitched heads and limbs. Each doll is

dressed to celebrate various seasonal themes such as Easter,

Christmas, and Thanksgiving.

Annalee produces a limited number of dolls which retail for

between $20.00 and $30.00. As a result of the limited production

Annalee dolls have become collector's items that have been resold

for as much as $1,500.00. The dolls are distributed nationally

via retail department and gift stores as well as through

Annalee's own retail outlets and catalogs. Annalee dolls are

marked with a stitched-in tag that identifies Annalee as the

manufacturer. They are sold in clear plastic wrappers that are

devoid of identifying markers.

In 1994, Defendant C.R. Seasons Ltd. ("Seasons"), began

producing dolls that, like plaintiff's, are made of soft felt

material, with painted-on faces and dressed in holiday (Easter)

garb. Defendant's dolls are made in China and are sold

exclusively through defendant Caldor's discount department

stores. Defendant's dolls retail for approximately half that of

2 plaintiff's, that is between $10.00 and $13.00. Defendant's

dolls are also conspicuously packaged in a cardboard display box

that clearly identifies "C.R. Seasons" as the source of the

product both on the front and back of the box. Finally, each

doll sold by defendant is marked with a stitched-in tag (roughly

in the same position as plaintiff's tag) that clearly identifies

C.R. Seasons as the manufacturer.

Annalee contends that the consuming public needs to be

protected from defendants' intentional infringement and the

inevitable customer confusion as to the source of defendants'

dolls that is likely to result from that infringement.

Furthermore, Annalee argues that granting a temporary restraining

order is necessary to prevent irreparable injury to Annalee's

trade dress and its associated good will in the marketplace.

II. STANDARD OF REVIEW

To obtain the extraordinary relief of a preliminary

injunction, a plaintiff must demonstrate: 1) a likelihood of

success on the merits at trial, 2) that irreparable harm will

result if the reguested relief is not granted, 3) that any harm

to the plaintiff, if the relief is not granted, outweighs any

3 harm granting the relief would inflict upon the defendant, and

4) that the public interest will not be adversely affected by

granting the reguested relief. Fed. R. Civ. P. 65; Planned

Parenthood League of Mass. v. Belloti, 641 F.2d 1006, 1009 (1st

Cir. 1981); Avery v. Powell, 695 F.Supp. 632, 642 (D.N.H. 1988). III. DISCUSSION

The dispositive issue before the court is plaintiff's

likelihood of succeeding on the merits. Both the packaging and

marking of goods is of paramount importance in trade dress

infringement cases such as this. Versa Products Co. v. Bifold

Co., 33 U.S.P.Q. 2d 1801 (3rd Cir. 1995).

[I]n trade dress infringement suits where the dress inheres in a product configuration, the primary factors to be considered in assessing likelihood of confusion are the product's labeling, packaging, and advertisements. 'The most common and effective means of apprising intending purchasers of the source of goods is a prominent disclosure on the container, package, wrapper, or the label of the manufacturer's or traders name . . . [and when] that is done, there is no basis for a charge of unfair competition.'" Venn v. Goedert, 319 F.2d 812, 816 (8th Cir. 1963).

Versa Products, 1995 U.S. Ap p . LEXIS 2838. Here, the trade dress

"inheres in [the] product configuration" — small soft thematic

dolls. In order to prevail, then, Annalee must begin by

4 demonstrating that it is likely to succeed in proving at trial

that Season's packaging will likely lead to customer confusion as

to source of defendants' dolls.

Seasons concedes that it was "aware" of Annalee's style of

doll before it began to produce its own dolls. In fact, there is

little doubt that Seasons blatantly modeled their dolls after

Annalee's style. Although the similarities in form and theme

between the parties' dolls are readily apparent to the lay eye,

the critical guestion is not whether the dolls are of the same

type (i.e. soft painted fabric collectable dolls celebrating

holiday themes), but whether defendants' dolls are sufficiently

distinguished from Annalee's when presented for sale to the

consuming public.

Unlike Annalee dolls, which are sold without packaging,

defendant's dolls are displayed and sold in individual bright

blue cardboard display boxes. Each box is clearly marked with

the "C.R. Seasons" trade name in two places and each doll has a

sewn on label bearing the Seasons trade name. The back of the

box discloses that the doll is manufactured in China, not New

Hampshire. Seasons' trademark, "Country Original," also appears

5 four times on the exterior of the box. Finally, there appears to

be little chance for legitimate customer confusion as defendant's

dolls appear to be of significantly lesser guality than Annalee

dolls, and Annalee's market appears to consist mainly of

sophisticated buyers interested in obtaining collectible Annalee

originals who can be expected to look for and recognize

distinguishing characteristics of Annalee's dolls (pear shaped

faces, furrier stitched chins, heightened rosiness of cheeks,

stitched-in Annalee label, simple plastic wrapping) that are not

mimicked by Seasons.

Again, while thematically similar and alike in appearance,

the respective products are sufficiently distinguishable in

appearance and guality that any latent confusion that might

otherwise result would likely be eliminated by the clear source

disclosures made on, and the nature of, defendant's packaging.

6 IV. CONCLUSION

Annalee has failed to demonstrate that it is likely to

succeed on the merits relative to the critical issue of customer

confusion. Accordingly, its motion for temporary restraining

order is necessarily denied.

SO ORDERED.

Steven J. McAuliffe United States District Judge

April 14, 1995

cc: Teresa C. Tucker, Esg. Norman P. Soloway, Esg. Richard C. Nelson, Esg. Neil M. Zipkin, Esg.