Cartier, Inc. v. Sardell Jewelry, Inc.

Cartier, Inc. v. Sardell Jewelry, Inc.
2008 WL 4206330 (2d Cir. 2008)

FACTS: Plaintiff Cartier is a maker of luxury watches, including the Tank Francaise watch. Defendant Sardell sold a close imitation of the Tank Francaise watch and Cartier sued for trade dress and trademark infringement.

PROCEDURAL POSTURE: S.D.N.Y. granted summary judgment to Cartier for trade dress infringement and awarded Cartier $94,217 and permanently enjoined Sardell from infringing the Tank Francaise watch line’s trade dress.

ISSUE: Whether maker of luxury watch line has acquired secondary meaning making its trade dress distinctive and whether there was likelihood of confusion

HOLDING: Court affirmed summary judgment for Cartier because the Tank Francaise watch line had secondary meaning and was distinctive. There also was no likelihood of confusion and the watch line was not functional.

A claim for trade dress infringement requires the plaintiff to prove: (1) that the mark is distinctive as to the source of the good, and (2) that there is a likelihood of confusion between its good and the defendants. Furthermore, the unregistered dress cannot be functional.

Distinctiveness can be shown by establishing the Tank Francaise had secondary meaning, through the consideration of six factors: (1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use. Defendants only challenge factors (1), (2), and (5). Secondary meaning is reviewed under the clearly erroneous standard. The Court found Cartier established secondary meaning. It spent large amounts of money to advertise for both Cartier generally and for the Tank Francaise. A survey conducted showed that 60% of relevant consumers identified the Tank Francaise with a single source. The fact that multiple merchants were using the terms, “Cartier style, “Tank style,” and “Tank Francaise” supports the argument that the Tank Francaise had acquired secondary meaning.

The likelihood of confusion depends on whether multiple ordinary prudent purchases are likely to be confused as to the source of the product because of defendant’s mark in the marketplace. The likelihood of confusion must be probably, not merely possible. Eight factors are considered in the likelihood of confusion analysis, but defendant is only appealing: the proximity of parties’ products, likelihood of bridging the gap, sophistication of the buyers, and quality of the defendant’s product. The district court’s findings regarding the factors are given considerable deference, while the balancing of the factors is reviewed de novo. In combination with the other four factors not on appeal, the court finds that there is a likelihood of confusion even though the factors on appeal favor the defendant. The court rejected the defendant’s argument that it and Cartier’s product were not in proximity in the marketplace because they were not sold at the same stores. The proximity of their products made the factor of bridging the gap inapplicable and the court did not address it. Because purchasers of luxury products tend to be sophisticated buyers, it was unlikely that purchases would confuse the plaintiff’s and the defendant’s products. While these factors favored the defendant, they did tip the scale of finding no likelihood of confusion.

The Tank Francaise’s trade dress was not functional even though the Tank Francaise performs a function. Defendants argued that the roman numerals and its square shape were functional. But trade dress is not functional if there are alternative designs to perform the same function and there were ways besides using Tank Francaise’s trade dress to perform the function of time keeping.

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