Rose Art Industries, Inc. v. Swanson

Opinions of the United

2000 Decisions States Court of Appeals

for the Third Circuit

12-13-2000

Rose Art Industries, Inc. v. Swanson

Precedential or Non-Precedential:

Docket 98-6489

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Filed December 13, 2000

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

No. 98-6489

ROSE ART INDUSTRIES, INC., a New Jersey Corporation;

WARREN INDUSTRIES, INC., an Indiana Corporation

v.

CARL SWANSON, an individual;

THE SWANSON GROUP, INC., a Delawar e Corporation;

RAYMOND GEDDES & COMPANY, INC., a

Maryland Corporation

Rose Art Industries, Inc.,

Appellant

Appeal from the United States District Court

for the District of New Jersey

(D.C. Civil Action No. 98-cv-02263)

District Judge: Honorable Joseph A. Greenaway, Jr.

Argued September 10, 1999

Before: ROTH and WEIS, Circuit Judges

SHADUR,1 District Judge

(Opinion filed: December 13, 2000)

_________________________________________________________________

1. Honorable Milton I. Shadur, United States District Court Judge for the

Northern District of Illinois, sitting by designation.

Roslyn S. Harrison, Esquire (Argued)

Joseph F. Falgiani, Esquire

Joan T. Pinaire, Esquire

Nicholas Albano III, Esquire

McCarter & English, LLP

Four Gateway Center

100 Mulberry Street

Newark, New Jersey 07102

Attorneys for Appellant

Kathryn Miller Goldman, Esquire

(Argued)

Donna M.D. Thomas, Esquire

Astrachan, Gunst, Goldman &

Thomas, P.C.

20 South Charles Street, 6th Floor

Baltimore, Maryland 21201

Attorneys for Appellee

OPINION OF THE COURT

ROTH, Circuit Judge:

The issue in this appeal is colorful. The appellant, Rose

Art Industries, Inc. (Rose Art), claims that the appellee,

Raymond Geddes and Company (Geddes), engaged in unfair

competition in violation of section 43(a) of the Lanham Act.

Specifically, Rose Art, a distributor of crayons, markers,

and colored pencils, seeks to enjoin Geddes fr om

distributing various stationery products (markers, crayons,

and colored pencils) in packaging that Rose Art alleges

infringes its trade dress.

The District Court held that Rose Art's packaging did not

have a "consistent overall look" and thus did not constitute

recognizable trade dress. The District Court denied Rose

Art's motion for a preliminary injunction because it found

that Rose Art had not demonstrated a reasonable

probability of success on the merits.

We conclude that the District Court misapplied the legal

standard in determining whether the characteristics of

2

three types of Rose Art's packaging constituted recognizable

trade dress. We will reverse the District Court's denial of

Rose Art's motion for a preliminary injunction and remand

this case for further proceedings consistent with this

opinion.

I. Facts

Rose Art Industries, Inc., a New Jersey corporation, has

been manufacturing and selling stationery pr oducts,

including crayons, colored pencils, and markers, for over

sixty years. Rose Art is currently the second-largest seller

in the United States of children's crayons, markers, and

chalks.

Raymond Geddes and Company, a Maryland corporation,

was founded in 1923 and originally sold novelty items.

Geddes subsequently expanded its operations in or der to

sell office supplies and stationery products to elementary

school bookstores. Initially, Geddes did not have its own

line of crayons. It purchased crayons fr om third parties,

such as Crayola or Sargent, for resale to schools. In 1994,

however, Geddes developed its own line of crayons called

Spectrum, which it marketed and sold to elementary school

bookstores in packaging designed by an independent

designer.2

In 1996, hoping to expand its sale of stationery pr oducts

into national mass merchandise retail outlets, Geddes hired

Chris Blackmon as its national sales manager to develop

mass market distribution channels for Geddes's pr oducts.

Under Blackmon's direction, Geddes's Cr eative Director,

Aleksandra Gulan, developed a product line under the

name KidStuf 1. KidStuf 1 included markers and colored

pencils, but not crayons.

In 1997, Geddes decided to further expand its mass

market offerings by designing an art supply line, including

a full range of markers, colored pencils, and crayons.

Geddes targeted older children, ages 10-12, for its new line

_________________________________________________________________

2. Engagement Manufacturing Company, a Taiwanese company that

manufactured Rose Art's crayons, also manufactured Geddes's Spectrum

crayons.

3

and named it "ARTiculates," suggesting a more

sophisticated arts and crafts product. Because Geddes felt

that the KidStuf 1 package design was not suitable for a

mass market line, it decided to create a new package design

for ARTiculates. Before cr eating the new design, Gulan and

Blackmon obtained samples and catalogs of other

manufacturers' retail stationery pr oducts, including Rose

Art's.

Gulan completed the design of the ART iculates packaging

in September 1997, in time for Geddes to show the new line

at the industry trade show in November. The ARTiculates

packaging was characterized by a yellow backgr ound with

a contrasting bold, bright color illustration of the product

on the box and the product type written in white letters on

a black oval-shaped band. The ARTiculates package also

featured the legend "since 1923" and the statement: "We

invite your comments about our product. Please write to:

Raymond Geddes & Company, Consumer Affairs, P .O. Box

24829, Baltimore, MD 21220." Both of these legends were

new additions to the Geddes product design.

In July 1997, Dollar General Corporation (Dollar General)3

conducted its standard annual bid process. During the bid

process, also known as a line review, Dollar General

accepted bids from different manufacturers seeking to

supply Dollar General with stationery products for 1998.

Rose Art instructed its manufacturer repr esentative, Carl

Swanson, to submit bids to Dollar General for Rose Art's

products. Unbeknownst to Rose Art, Swanson was also

Geddes's manufacturer representative. Rose Art alleges that

Swanson failed to submit bids for a number of Rose Art's

products but that he did submit bids to Dollar General on

behalf of Geddes for its stationery products. 4

_________________________________________________________________

3. Dollar General is a multi-billion dollar discount retailer with over

3,600 stores nationwide.

4. In its complaint, Rose Art asserted claims against Swanson and

Geddes for misappropriation of Rose Art's trade secrets. Rose Art and

Swanson have settled their claim. The only issue before the District

Court on Rose Art's motion for a preliminary injunction was whether

Geddes's packaging infringed Rose Art's trade dr ess.

4

In August 1997, Chris Blackmon and Swanson met with

Gail Moore, the buyer for Dollar General's stationery

department. At this meeting, Blackmon showed Moor e the

KidStuf 1 line of products. In a second meeting on October

2, 1997, Blackmon showed Moore some crayon and marker

samples in the ARTiculates packaging. Moore expressed

interest in Geddes's ARTiculates line but did not like the

ARTiculates packaging because it was too wordy, busy, and

dull. She told Blackmon that she was looking for a package

that was more basic, simple, and colorful with a design that

would appeal to younger children. Moore instructed

Blackmon to create a package that looked mor e like

Crayola's package.5 Blackmon agr eed to provide Moore with

a revised package design.

Based on Moore's directions, Blackmon instructed Gulan

to redesign the ARTiculates packaging using the KidStuf

name and modifying the package to make it brighter and

simpler. The new design, which the parties r efer to as

KidStuf 2, consists of the following characteristics: a bright

yellow background on the top half of the package with a

bright contrasting color on the bottom, the pr oduct type in

white letters on a black band in the middle of the package,

a rainbow backdrop (referred to by the District Court as a

"swish") on which the KidStuf mark is superimposed, the

statement that the product is "Certified Non-Toxic," the

legend "since 1923", and the statement "W e invite your

comments about our product. Please write to: Raymond

Geddes & Company, Consumer Affairs, P.O. Box 24829,

Baltimore, MD 21220."

On October 6, 1997, Geddes sent artwork, depicting the

KidStuf 2 package design, to Dollar General. On October

10, Geddes sent forty-eight mock-up packages. The mock-

ups comprised other manufacturers' crayon packages,

including Rose Art's, with Geddes's KidStuf 2 package

design wrapped around the other manufactur ers' packages.

The forty-eight Geddes mock-up packages were used by

Dollar General in its planogram room (wher e the company

_________________________________________________________________

5. Rose Art contends that Geddes must have been instructed to imitate

Rose Art's packaging because the resulting package does not resemble

Crayola's but rather Rose Art's.

5

displayed products as if they were on a shelf in a store) for

review by Dollar General's executives in their selection of

new vendors. In December 1997, after completing its

standard annual bid process, Dollar General selected

Geddes as its primary supplier of stationery pr oducts for

1998.

II. Procedural History

On May 20, 1998, Rose Art filed suit in U.S. District

Court for the District of New Jersey, claiming unfair

competition in violation of section 43(a) of the Lanham Act.

Rose Art alleged that Geddes's KidStuf 2 packaging and its

ARTiculates packaging were confusingly similar to Rose

Art's packaging, especially Rose Art's Primary Color

Packaging.

In an attempt to settle this litigation, Geddes in July of

1998 created a new package design for its stationery

products (New Package Design). Geddes's New Package

Design prominently displays the "Raymond Geddes" logo

below the product's name. The box is characterized by a

gold-yellow color on the top portion of the box and a

contrasting purple-magenta color on the bottom; the

product's type (e.g., crayons) is featur ed in white letters on

top of a multi-tiered band of shades of blue. In addition, the

New Package Design displays the products themselves

either through a die cut, which reveals the markers or

pencils, or through crayon illustrations, arranged in a

rainbow design. Despite Geddes's efforts to settle, however,

Rose Art now alleges that the New Package Design is also

confusingly similar to Rose Art's packaging, especially the

Rose Art Neon Color Packaging.

On August 3, 1998, Rose Art filed a motion for a

preliminary injunction to stop Geddes fr om selling the

alleged infringing packaging. The District Court denied the

motion. See Rose Art Indus., Inc. v. Raymond Geddes & Co.,

31 F. Supp. 2d 367 (D.N.J. 1998).

Rose Art claims on appeal that its trade dress for

crayons, markers, and colored pencils is composed of the

following elements: (1) a prominent band that is either

straight or wavy and often black in color that cuts across

6

the middle of the front of the package, extending to the

sides with the words "CRAYONS" or"WASHABLE

MARKERS" or other descriptive term in white letters

imprinted on the band (the "Band and Letter feature"); (2)

a yellow background on the top of the package with a

contrasting background color (either red, purple, pink, or a

combination of purple fading to red) on the bottom of the

package; and (3) a prominent display of the Rose Art logo

in golden yellow (either foil or print) or r ed, either with or

without a rainbow "swish" design behind the logo on the

front of the package. In addition, in its pr esentation to the

District Court, Rose Art included three other elements in its

claim of infringement: (1) the statement "since 1923"; (2)

the statement on the front of the package that the product

is "Certified Non-Toxic;" and (3) the sentence inviting

consumer comments, "Rose Art invites your comments and

questions about this product. Please write to Rose Art

Industries, Inc., Consumer Affairs, 6 Regent St., Livingston,

NJ 07039 or call 1-800-CRAYONS."

Rose Art presents three differ ent subgroups of product

packaging as recognizable trade dress: Rose Art Primary

Color Packaging, Rose Art Neon Color Packaging, and Rose

Art Color Fade Packaging. Rose Art seeks trade dr ess

protection for each of these three subgr oups. Rose Art

contends that its Primary Color Packaging is used to

package traditional crayons, markers, and chalk pr oducts;

it features the Band and Letter feature (with white letters

over a straight or wavy black band), a yellow backgr ound

on the top of the package, and a red or purple background

on the bottom of the package with the Rose Art logo in

golden yellow print or gold foil and rainbow "swish."

Similarly, Rose Art contends that its Neon Color Packaging,

as the name suggests, is used to package neon color

crayons and scented, shaped, or "color change" markers; it

features the Band and Letter feature (with white letters over

a straight or wavy purple, pink or black band), a

flourescent yellow background on the top of the package,

and the Rose Art logo with the rainbow "swish" on the

bottom emblazoned on a pink or purple backgr ound.

Finally, Rose Art contends that its Color Fade Packaging,6

_________________________________________________________________

6. The Rose Art Color Fade Packaging was originally only used to

package products sold at Wal-Mart.

7

which is used to package crayons, bold and classic

markers, colored pencils, and modeling clay, features the

Band and Letter feature, with white letters over a black

band, the Rose Art logo in red letters above the band, a

yellow background on the top of the package, and a color

fade from purple to red background on the bottom. In

addition, the packaging for colored pencils and some

crayons displays the crayons or colored pencils on the

bottom right hand corner of the package. Rose Art admits

that some of its packages combine features fr om more than

one of the three subgroups for which it seeks trade dress

protection but claims that even those packages fall "clearly

within the Rose Art Family Trade Dress."

Rose Art markets, advertises, and sells its pr oducts in

many other package designs, as reflected in the materials

gathered by Geddes for the preliminary injunction hearing

(purchased either at Target, T oys "R" Us or KMart or from

Rose Art's catalog). However, Rose Art contends that

crayons, markers, and colored pencils packaged in Primary

Color Packaging, Color Fade Packaging, and Neon Color

Packaging constitute "the vast majority of its crayon[s],

marker[s] and colored pencil[s]."

III. Discussion

A. Jurisdiction and Standard of Review

This action was filed by Rose Art pursuant to section

43(a) of the Lanham Act. Section 43(a) creates a federal

cause of action for unfair competition and pr ohibits the sale

of goods by use of

any word, term, name, symbol, or device, or any

combination thereof, or any false designation of origin,

false or misleading description of fact, which--(A) is

likely to cause confusion, or to cause mistake, or to

deceive as to the affiliation, connection, or association

of such person with another person, or as to the origin,

sponsorship, or approval of his or her goods, services,

or commercial activities by another person. . ..

15 U.S.C. S 1125(a) (1999); see American Greetings Corp. v.

Dan-Dee Imports, Inc., 807 F.2d 1136, 1140 (3d Cir. 1986).

8

The District Court had federal question jurisdiction

pursuant to 28 U.S.C. S 1331. See 28 U.S.C. S 1331 (1999).

We have appellate jurisdiction to review the District Court's

interlocutory order denying a preliminary injunction

pursuant to 28 U.S.C. S 1292(a)(1). See 28 U.S.C.

S 1291(a)(1) (1999). We review the District Court's order

denying a preliminary injunction under an abuse of

discretion standard, its factual findings under a clear error

standard, and its findings of law under a de novo standard.

See NutraSweet Co. v. Vit-Mar Enter., Inc., 176 F.3d 151,

153 (3d Cir. 1999).

B. Background

The District Court determined that "Rose Art seeks trade

dress protection not for the overall appearance of a single

product, but rather for the overall look of a line of

packaging for three products--crayons, markers and

colored pencils." Rose Art Indus. Inc. v. Raymond Geddes

and Co., 31 F. Supp. 2d 367, 373 (D.N.J. 1998). The

District Court noted that the Third Cir cuit Court of Appeals

had not addressed the plaintiff 's bur den in such a case,

but acknowledged that the Second Circuit, Fifth Circuit,

and district courts within the Second Circuit had

recognized such trade dress protection.

The District Court held that a plaintiff seeking protection

for a line of products, rather than a single pr oduct, must

establish that the series or line of products for which it

seeks trade dress protection has a "consistent overall look."

See id. (quoting Walt Disney Co. v. GoodTimes Home Video

Corp., 830 F. Supp. 762, 766 (S.D.N.Y . 1993)).

Applying the "consistent overall look" standar d to this

case, the District Court concluded that "the variations in

Rose Art's package design are not slight but rather

represent a kaleidoscope of color combinations and design

formats which fail to convey a `consistent overall look' to

the consumer." Rose Art, 830 F .Supp at 376. Addressing

each of the six elements asserted by Rose Art to be part of

its trade dress, the District Court concluded that:

Rose Art's trade dress varies so widely that consumers

cannot conclude that the products come fr om one

9

source. Accordingly, this Court concludes that Rose Art

uses numerous different styles of packaging for its

crayons, markers and colored pencils such that its

packaging fails to present a "consistent overall look"

and does not qualify for trade dress pr otection under

the law.

Id. at 378.

The District Court ended its analysis with the finding of

no consistent overall look, concluding that the Appellants

had not demonstrated a reasonable probability of success

on the merits.7 Since the r equirements of a trade dress

infringement claim are conjunctive, the court did not

analyze the remaining elements: (1) inher ent distinctiveness

or secondary meaning, (2) non-functionality, and (3)

likelihood of confusion.

C. Analysis

1. The Proper Legal Standard for Identifying Recognizable

Trade Dress

The application of section 43(a) of the Lanham Act is not

limited to trademarks. Section 43(a) also pr ovides

protection to "certain words, symbols, collocations of colors

and designs, or other advertising materials or techniques"

that the purchasing public has come to associate with

goods from a single source. R.J.R. Foods, Inc. v. White Rock

Corp., 603 F.2d 1058, 1059 (2d Cir . 1979); see also Duraco

Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1438

(3d Cir. 1994) (holding that section 43(a) of the Lanham Act

protects trade dress).

Trade dress has been defined as the total image or overall

appearance of a product, and includes, but is not limited

to, such features as size, shape, color or color

combinations, texture, graphics, or even a particular sales

technique. See Two Pesos, Inc. v. Taco Cabana, Inc. 505

U.S. 763, 765 n.1 (1992).

_________________________________________________________________

7. The District Court did not address the other three components of the

preliminary injunction standard.

10

Typically, in a trade dress action under section 43(a) of

the Lanham Act, the plaintiff is requir ed to prove that "(i)

the trade dress is distinctive, either because it is inherently

distinctive or because it has acquired distinctiveness; (ii)

the trade dress is nonfunctional; and (iii) the defendant's

use of plaintiff 's trade dress is likely to cause consumer

confusion." Duraco Prods., 40 F .3d at 1439. This three-part

inquiry alone, however, is insufficient when the plaintiff in

a trade dress action seeks protection under the Lanham Act

for a series or line of products or packaging. As the Second

Circuit Court of Appeals has noted, in contrast to a

situation where the plaintiff is seeking protection for a

specific package or a single product, "when protection is

sought for an entire line of products, our concern for

protecting competition is acute." Landscape Forms, Inc. v.

Columbia Cascade Co., 113 F.3d 373, 380 (2nd Cir. 1997);

see also Regal Jewelry Co. v. Kingsbridge Int'l, Inc., 999 F.

Supp. 477, 486 (S.D.N.Y. 1998) ("[C]ourts consider . . .

broader product line claims with an `acute' concern for

protecting competition given that any r emedy could

potentially cover a wide range of products."). This concern

led to the development of the "consistent overall look"

standard.

In the first case to set forth the "consistent overall look"

standard, Walt Disney Co. v. Good T imes Home Video Corp.,

830 F. Supp. 762 (S.D.N.Y. 1993), the plaintiff sought

protection not for a specific package or the appearance of a

single product but for the overall appearance of a number

of different packages. See id. at 766. The district court in

Walt Disney, noting the distinction between Disney's claim

and the typical claim in a single product trade dress action,

stated:

Disney has a burden which most plaintif fs alleging

trade dress infringement do not need to carry. Disney

must establish the existence of a recognizable trade

dress. That is, Disney must establish that its

videocassette packages have a consistent overall look.

If established, this trade dress is entitled to protection

under Lanham Act S 43(a) if it is distinctive, meaning

capable of identifying Disney as the source of the

videocassettes, and if GoodTimes' trade dr ess is likely

11

to mislead consumers to believe that GoodTimes'

Aladdin is the Disney version.

Id.

Rose Art argues, however, that the District Court applied

the wrong legal standard when it applied the "consistent

overall look" standard before it considered the black letter

law standard of non-functionality, distinctiveness, and

likelihood of confusion. Rose Art contends that the District

Court should have required Rose Art to meet only the latter

standard.

We are persuaded that the "consistent overall look"

standard, set forth in Walt Disney and applied by the

Second Circuit Court of Appeals in Landscape Forms and

other cases, is the appropriate threshold inquiry in a trade

dress case where the plaintiff seeks protection for a series

or line of products or packaging. See, e.g. , Samara Brothers,

Inc. v. Wal-Mart Stores, Inc., 165 F.3d 120, 125-27 (2d Cir.

1998), rev'd on other grounds, 120 S. Ct. 1339, 1345-46

(2000); Landscape Forms, Inc., 113 F .3d at 380-81;

Innovative Networks, Inc. v. Satellite Airlines T icketing Ctrs.,

Inc., 871 F. Supp. 709, 722-23 (S.D.N.Y . 1995).8

Because of the broad reach that pr otection of trade dress

for a series or line of products would embrace, we will

require this more stringent test before the non-

functionality/distinctiveness/likelihood of confusion test is

applied. A plaintiff, seeking protection for a series or line of

_________________________________________________________________

8. The District Court also cites Chevr on Chemical Co. v. Voluntary

Purchasing Groups, Inc., 659 F.2d 695 (5th Cir. 1981) and Keystone

Camera Products Corp. v. Ansco Photo-Optical Products Corp., 667 F.

Supp. 1221 (N.D. Ill. 1987) as cases that have applied the "consistent

overall look" standard. While these cases ar e consistent with and provide

support for such a standard, the "consistent overall look" standard was

not articulated until 1993 in Walt Disney , 830 F. Supp. at 766; cf.

Chevron, 659 F.2d at 697 (describing the Ortho packaging used for "125

law and garden products in a `uniform' family trade dress"); Keystone,

667 F. Supp. at 1229 ("Before analyzing secondary meaning, confusion

and functionality, this court must . . . pause to consider whether

Keystone has a protectable trade dress for its cameras which bear

clashing, contrasting, multiple color combinations with a distinctive dot

pattern.").

12

products, must first demonstrate that the series or line has

a recognizable and consistent overall look. Only after the

plaintiff has established the existence of r ecognizable trade

dress for the line or series of products should the trial court

determine whether the trade dress is distinctive, whether

the trade dress is nonfunctional, and whether the

defendant's use of plaintiff 's trade dr ess is likely to cause

consumer confusion. As such, we hold today that the

District Court applied the correct legal standard when it

required Rose Art first to show that the three packaging

designs at issue, Primary Color Packaging, Neon Color

Packaging, and Color Fade Packaging, each had a

"consistent overall look." We agr ee with the District Court

that "if a plaintiff seeking trade dr ess protection cannot

show that its packages have a `consistent overall look,' the

trade dress that the defendant is allegedly infringing `does

not exist,' " and the defendant must pr evail. Rose Art, 31 F.

Supp. 2d at 374.

In endorsing the "consistent overall look" standard,

however, we do not require that the appearance of the

series or line of products or packaging be identical. As the

District Court stated "a party may have trade dr ess rights

even though there are slight variations in its package

design so long as the change does not alter the distinctive

characteristics and the trade dress conveys a single and

continuing commercial expression." See id. at 373 (citing

Beech-Nut Packing v. Lorillard Co., 229 F . Supp. 834, 849-

50 (D.N.J. 1924), aff 'd 7 F.2d 967 (3d Cir. 1925), aff 'd 273

U.S. 629 (1927)).

2. The District Court's Application of the Consistent Overall

Look Standard

Rose Art next contends that the District Court impr operly

applied the "consistent overall look" standar d in this case;

that it erred as a matter of law by considering products not

at issue. Rose Art is seeking trade dress pr otection only for

its Primary Color Packaging, Color Fade Packaging, and

Neon Color Packaging. The District Court, however ,

considered products beyond these pr oduct lines to support

its conclusion that each of these Rose Art pr oduct lines did

not have a "consistent overall look."

13

As a preliminary matter, the plaintif f in a trade dress

action under section 43(a) of the Lanham Act is fr ee to seek

trade dress protection for whatever pr oducts or packaging

it sees fit. A plaintiff can seek trade dr ess protection either

for a single product or for a whole line of pr oducts. See,

e.g., Ideal Toy Corp. v. Plawner T oy Mfg. Corp., 685 F.2d 78,

79 (3d Cir. 1982) (single product); Regal Jewelry, 999 F.

Supp. at 481 (S.D.N.Y. 1998) (line of pr oducts). Moreover,

in seeking protection for the trade dress of a line of

products, the plaintiff can define the line as it sees fit. In

addition, there is nothing to constrain a plaintiff from

seeking protection for several differ ent lines of products (or

of the packaging of those products). In pr esenting a case for

trade dress infringement, a plaintiff can group together any

number of products in any way it sees fit, as long as the

products have a consistent overall look.

Here, Rose Art has alleged trade dress infringement of

three distinct package designs: its Primary Color Packaging,

its Color Fade Packaging, and its Neon Color Packaging.

The District Court, however, in deter mining whether the

packaging of these three product lines constituted

recognizable trade dress (that is, whether the packaging

had a "consistent overall look") consider ed product

packaging outside the Primary Color Line, the Color Fade

Line, and the Neon Color Line.

The District Court, to support its conclusion that Rose

Art had not established the existence of recognizable trade

dress, found that "certain packages of Rose Art crayons do

not have a yellow background on the top of the package"

and thus found lacking a critical element of Rose Art's

alleged trade dress. Rose Art, 31 F . Supp. 2d at 376.

However, one of the crayon packages r eferred to by the

District Court was the Glow Crayons package with a black

background on the top half;9 Glow Crayons are not a part

of the Primary Color Line, the Color Fade Line, or the Neon

Color Line. Similarly, in concluding that Rose Art used

eight different background color combinations as a part of

_________________________________________________________________

9. During the preliminary injunction hearing, Rose Art specifically stated

that it would be willing to abandon efforts to protect the packaging of

its

glow-in-the-dark crayons.

14

the trade dress it is seeking to protect, see id., the District

Court considered products not within the designated lines:

glow crayons, glitter and brilliant color crayons, and

fluorescent, glitter and superscented crayons. In addition,

in concluding that all Rose Art packages do not use the

Band and Letter Feature, see id., the District Court

considered products not within the designated lines: Super

Box of Crayons, Super Jumbo Crayons, Pre-School

Crayons, Super Rainbow Pack, and Washable Markers in a

bucket. Finally, in concluding that Rose Art used eight

different colors for its Band and Letter Feature, see id., the

District Court again considered products not within the

designated lines, including washable markers and glitter

and brilliant crayons.

In addition to considering products not within the

designated lines, the District Court consider ed designated

products that were packaged in dif ferent types of boxes.

The District Court pointed out that Rose Art used multiple

package designs for the same product. For example,

washable markers and classic colors were packaged using

different package designs, see id. at 378; traditional

crayons were packaged in the Primary Color Packaging with

a yellow background on the top half of the package and the

Rose Art logo with the rainbow swish on the bottom in front

of a red or purple background but they wer e also packaged

in a box with a red background on top, a yellow

background on the bottom and the Rose Art logo displayed

on the upper left hand corner of the box, superimposed on

a triangle. See id. at 376. Scented markers were packaged

in the Neon Color Packaging with the rainbow swish on the

bottom of the package but the rainbow swish did not

appear on all packages of scented markers. The District

Court concluded that this use of other types of packaging

for designated products undermined Rose Art's claim of

recognizable trade dress.

The District Court's reasoning in this r egard is flawed.

The fact that Rose Art uses a variety of packages for a

product such as traditional crayons would be fatal to Rose

Art's case if Rose Art claimed that all traditional crayons

were packaged in Rose Art's Primary Color Packaging, but

Rose Art makes no such claim. Certainly the fact that Rose

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Art packages the same product in several dif ferent types of

packaging does not prevent Rose Art from seeking trade

dress protection for one of these packaging designs.10

If Rose Art distributed three differ ent lines of crayons,

each line having its own distinctive packaging, and if the

packaging of each line has its own "consistent overall look,"

then the packaging of each line would constitute

recognizable trade dress regar dless of whether the

packaging of the three lines together have a "consistent

overall look" and regardless of whether some crayons were

packaged in other types of packaging. Even if Rose Art

distributed the same products, for example, generic

crayons, markers, and colored pencils in fifteen different

package designs for each of fifteen differ ent customers, this

fact alone would not prevent Rose Art fr om obtaining trade

dress protection for one of the fifteen different packaging

styles. One or more of the package designs could be

recognizable trade dress as long as it had a "consistent

overall look." If, however, we wer e to follow the District

Court's logic, a manufacturer or distributor would not be

able to seek trade dress protection unless all its packaging

had a "consistent overall look," regar dless of whether the

individual line had a "consistent overall look." This

standard is legally untenable.1 1

We conclude that when applying the "consistent overall

look" standard, that is, when determining whether the

trade dress alleged by the plaintiff is r ecognizable,

protectable trade dress, a trial court should consider only

_________________________________________________________________

10. To use a more familiar example, Coca-Cola bottles would certainly

be, at a minimum, recognizable trade dr ess despite the fact that Coca-

Cola is also packaged in cans and that the design of a Coca-Cola bottle

in no way resembles the design of a Coca-Cola can.

11. A simple analogy may be helpful: If a hypothetical company that

produced three products (one with r ed packaging, one with blue

packaging, and one with white packaging) sought trade dress protection

for the product packaged in red, it would almost certainly be able to

show that the red packaging was recognizable trade dress as defined by

the "consistent overall look" standard used in the Second Circuit and

adopted by us today, even if the three dif ferent types of packaging

together did not have a "consistent overall look." Counsel for Geddes

rightly conceded this point at oral argument.

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the products or packaging for which the plaintiff is seeking

trade dress protection. See Regal Jewelry, 999 F. Supp. at

486-90 (determining whether alleged trade dr ess had a

consistent overall look by evaluating only the six novelty

items at issue despite the fact that the plaintif f distributed

almost 200 different novelty items).

The proper question is not whether Rose Art has

consistently applied one trade dress to its packages of

crayons, markers, and colored pencils, but rather whether

Rose Art's Primary Color Packaging, Neon Color Packaging,

and/or Color Fade Package each individually has a

"consistent overall look."12 As such, we also hold today that

when a plaintiff seeks trade dress pr otection under section

43(a) of the Lanham Act for multiple product lines or

packaging, a District Court should evaluate each of the

lines separately. In this case, for example, in determining

whether Rose Art's Primary Color Packaging has a

"consistent overall look," the District Court should consider

this line alone, independently of the other lines for which

Rose Art seeks trade dress protection.

IV. Conclusion

Because the District Court misapplied the "consistent

overall look" standard, we will reverse the District Court's

denial of Rose Art's motion for a preliminary injunction and

_________________________________________________________________

12. In considering the trade dress implications of the fact that Rose Art

markets the same product in differ ent packages, we are not concerned

by the existence of different styles of packaging. If a manufacturer

chooses to seek trade dress protection for too insignificant a line of

products, the manufacturer may pass the"consistent overall look" test

but then founder on distinctiveness or likelihood of confusion. The

temptation to define too thinly, therefor e, is not without its own

inherent

limitations.

We also note that the District Court's statement that "Rose Art's trade

dress varies so widely that consumers cannot conclude that the products

come from one source," while per haps consistent with or a proxy for the

District Court's conclusion that Rose Art's alleged trade dress did not

have a "consistent overall look," is strikingly similar to the third part

of

a section 43(a) claim--whether consumers ar e likely to confuse the

source of the plaintiff 's product with that of the defendant's product.

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remand this case for further proceedings consistent with

this opinion.13 On remand, the trial court should determine

whether each of the three packaging designs for which Rose

Art seeks trade dress protection, the Primary Color

Packaging, the Color Fade Packaging and the Neon Color

Packaging, has a "consistent overall look." If on remand,

the District Court determines that one or mor e of these

packaging designs does have a "consistent overall look" and

thus constitutes recognizable, protectable trade dress, the

District Court should then, in the context of evaluating

Rose Art's request for a preliminary injunction, determine

whether the trade dress is distinctive, either because it is

inherently distinctive or because it has acquir ed

distinctiveness, whether the trade dress is nonfunctional,

and whether Geddes's use of Rose Art's trade dr ess is likely

to cause consumer confusion.

A True Copy:

Teste:

Clerk of the United States Court of Appeals

for the Third Circuit

_________________________________________________________________

13. We express no opinion concerning the merits of the plaintiff's claim,

that is, whether the Primary Color Packaging, the Color Fade Packaging,

or the Neon Color Packaging constitutes recognizable, protectable trade

dress, is distinctive, is non-functional, or is likely to cause consumer

confusion.

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