I.P. LUND TRADING APS v. KOHLER CO.

ORDER

For the reasons stated in the accompanying Memorandum and Order, threeof Kohler's motions for summary judgment [docket ## 239, 241, and 243]are GRANTED as to Counts I-VIII of Lund's Amended and SupplementalComplaint. Kohier's Motion for Summary Judgment of Functionality [docket# 237] is DENIED.

As to Counts IX-XIII, the parties failed to adequately brief Lund'snon-trademark theories of liability brought under state unfaircompetition and deceptive trade practices statutes. The parties haveuntil November 2, 2000, to file supplementary briefs on those claims.

Lund's Motion to Exclude Testimony by Defendants' "Expert" Witnesses[docket # 230] and Motion to Compel [docket # 275] are MOOT.

SO ORDERED.

MEMORANDUM AND ORDER

I. INTRODUCTION

This case goes to the heart of the question: What is the scopeof trade dressprotection that a product design may be afforded under the Lanham Act?1I.P. Lund Trading ApS ("Lund") and Kroin Incorporated ("Kroin") seekprotection for what courts often call a "product configuration," here abathroom faucet known as the VOLA ("VOLA").2 The VOLA was designed bya Danish inventor nearly thirty years ago. Lund has owned and marketedthe product since its inception. Kroin as its exclusive distributor inthe United States.

Defendant Kohler Company ("Kohler") designed a similar product calledthe Falling Water faucet ("Falling Water I") Kohler and its subsidiary,Robern, Inc. ("Robern"), started selling the Falling Water I in February1996.3

Lund initiated this action by seeking permanent injunctive relief andmonetary damages against Kohler for: (1) infringement of its distinctivetrade dress and unfair competition under 15 U.S.C. § 1125(a); (2)dilution of its famous trade dress under 15 U.S.C. § 1125(c); (3)dilution of trade dress under various state anti-dilution statutes; and,(4) unfair and deceptive trade practices under several state statutes. Ina nutshell, Lund is seeking indefinite protection of its unpatentedfaucet design against copying and reproduction by its competitors.

Discovery is complete. Kohler moves for summary judgment on a multitudeof grounds. Kohler's first motion for summary judgment argues that Lundhas failed to produce evidence from which a jury could find that the VOLAdesign acquired "secondary meaning," and therefore, the design is notprotectible as trade dress. In addition, Kohler filed three other motionsfor summary judgment based on: (1) the alleged functionality of the VOLAdesign, which Kohler argues, requires Lund to seek protection in a designpatent, for a limited term, rather than trademark protection; (2) Lund'salleged failure to establish dilution of its design; and, (3) Lund'salleged failure to establish infringement and unfair competition understate law. The parties presented voluminous materials to the Court insupport of their positions on summary judgment. On July 19, 2000, ahearing was held.

Having considered the entire record before me, I now conclude thatthere exists no genuine issue of material fact as to whether the VOLA hasacquired secondary meaning; it has not. Thus, three ofKohler's motions for summary judgment, which hinge on that finding (forfailure to establish secondary meaning, infringement, and dilution[docket ## 239, 241, and 243]) are GRANTED as to Counts I-VIII of Lund'sAmended and Supplemental Complaint. As to Counts IX-XIII, the partiesfailed to adequately brief Lund's non-trademark theories of liabilitybrought under state unfair and deceptive trade practices statutes. Theparties have until November 2, 2000, to file supplementary briefs on thoseclaims. Kohler's Motion for Summary Judgment of Functionality [docket #237] is DENIED. Lund's Motion to Exclude Testimony by Defendants'"Expert" Witnesses [docket # 230] and Motion to Compel [docket # 275] areMOOT.

II. BACKGROUND

A. Factual Context

Lund is a family-owned Danish corporation, established in 1873. Itmanufactures high-end kitchen and bathroom faucets, fixtures, andaccessories. The VOLA faucet was designed by the distinguished architectProfessor Arne Jacobsen ("Jacobsen") in 1968. It has won numerous designawards, including the Danish ID prize for industrial design innovation,and the Danish Classic ID prize (awarded to products whose designs havesurvived and thrived for twenty-five years without significant designmodification).

The VOLA faucet design has remained virtually unchanged throughout thepast thirty years. Since 1969, the year the VOLA products wereintroduced, Lund has sold more than 600,000 VOLA faucets throughout theworld. The VOLA line of sanitary fittings is Lund's principal source ofrevenue.

Co-plaintiff Kroin is the sole American distributor of the VOLA.Kroin's owner, Larry Kroin, was Lund's first American distributor,starting in 1976. Kroin has since sold thousands of VOLA faucets,amounting to approximately $16 million worth of sales. Between 1988 and1997, Kroin spent more than $684,000 to advertise the VOLA line ofsanitary fittings.4

Lund has promoted the VOLA faucet across the world, spending more than$10 million since 1980. Most of the advertisements for the VOLA are printadvertisements that appear in prestigious design magazines, includingArchitectural Record, Interior Design, and Interiors. Hundreds ofpictures of the VOLA have appeared as parts of photo spreads in thesemagazines, and other less specialized magazines, such as Better Homes andGardens.

Kohler, based in Kohler, Wisconsin, is the largest plumbing fixturessupplier in the United States, with more than $1.5 billion worth of salesin 1996 alone. Kohler sells hundreds of different kitchen and bathroomsanitary fitting designs. On November 22, 1994, Kohler's PurchasingManager, Jeffrey Klosterman, contacted Lund expressing Kohler's"interest[] in the possible purchase of this product [the VOLA] andpotentially others that you may have . . . for resale under our brand namein the United States." The letter also requested volume pricing andseveral product samples for testing "under United States regulations."

In January 1995, Kohler purchased from Lund eight VOLA 121C faucets "tobegin qualification testing." According to Kohler, the company intendedto introduce (in September 1995) their new "Vessels" basin, a "high-endsink with no holes (as compared to the normal three-hole sink)."5 Thecompany sought an accompanying faucet for its product. While the VOLA wascompatible with the Vessels sink, Kohler claims that an April 1995 testreport showed that the VOLA faucets did not comply with federal and statelegal "requirements." Specifically, Kohler allegesthat the VOLA did not meet requirements concerning water flow capacityand resistance to hydrostatic pressure.6 Lund disputes thesefindings, as well as the significance of any such federal, state, orlocal "requirements."

Robern, before it became a Kohler subsidiary, designed a bathroom sinkmodule which was compatible with the VOLA, known as the MTS Sink Module.Robern sold these modules with VOLA faucets purchased from Kroin. BetweenJanuary 1993 and September 1995, Robern purchased 218 VOLA faucetsdirectly from Kroin.

In August 1995, Kroin accused Robern of selling VOLA faucets to Kroincustomers for prices lower than what Kroin was charging. Kroin thenrefused to sell Robern any more VOLA faucets. Shortly thereafter, Kohleracquired Robern. In August 1996, Robern announced that it would ship MTSSink Modules with Kohler's Falling Water I faucets, which are alsocompatible with no-hole, freestanding vessel sinks. After Robern ceasedsales of VOLA faucets, however, Robern distributed at least one salesbrochure depicting the VOLA faucet alongside the Falling Water I andother lavatory accessories.

The Falling Water I faucet was designed by Erich Slothower, a Kohlerindustrial designer. He testified (at an earlier hearing on preliminaryinjunctive relief) that while he was aware of the VOLA, and even lookedat it carefully before designing the Falling Water I, he consciouslytried to make his faucet different in appearance than the VOLA. However,the Falling Water I shares several features of the VOLA design.Similarities between the two faucets include: (1) both aresingle-control, wall-mounted faucets; (2) both control handles utilize athin cylindrical lever to adjust water temperature and volume; (3) bothfaucets' spouts and aerator holders are of uniform diameter; (4) bothspouts bend downward at right angles softened by a curve; and, (5) bothfaucets offer spouts in almost exactly the same three lengths.

There are also differences. First, the Falling Water I has a taperedand rounded bonnet on the handle, and when the lever on the bonnet isoperated to control the water temperature and volume, the entire bonnetmoves with it. By contrast, the VOLA handle is shorter; it is acompletely uniform cylinder, not tapered; and only the lever moves tocontrol volume, while the lever and cylinder turn clockwise orcounter-clockwise to control temperature. Second, the Falling Water I'slever is rounded on the top, while the VOLA's lever is flat. Third, themounting end of the Falling Water I spout also has a tapered, roundedbonnet, mirroring that of the handle and lever, while the VOLA spout hasno bonnet.

After this lawsuit was initiated by Lund, Kohler introduced are-designed Falling Water faucet ("Falling Water II") in June 1998. Lundconcedes that the re-designed Falling Water II does not infringe its VOLAfaucet design. The Falling Water II now significantly outsells both theFalling Water I and the VOLA in the United States.

Lund claims the sale of the Falling Water I faucet, and itsadvertisement in catalogues which also depict the VOLA faucet (indeed,side-by-side), causes confusion among retailers and customers, anddilutes the brand-identity of the VOLA faucet, all in violation of15 U.S.C. § 1125(a) and (c). Kohler argues inter alia, that the VOLAfaucet design is not entitled to trademark protection under15 U.S.C. § 1125(a) and (c) because it is not "distinctive" withinthe meaning of that statute.

To succeed on its claims, Lund must squeeze the facts of its casewithin the murky and shifting boundaries of current trademark law.

B. Legal Context

On Lund's application for preliminary injunctive relief, I found thatit was not likely to succeed on its claim of trade dress infringementbecause its customers — sophisticated purchasers of high endfaucets — were not likely to confuse a VOLA faucet with a Kohlerfaucet. See I.P. Lund Trading APS v. Kohler Co., 11 F. Supp.2d 112, 115(D. Mass. 1998) [hereinafter "Lund I"], aff'd in part, vacated in part,163 F.3d 27 (1st Cir. 1998). However, Lund's dilution claims raised morefundamental problems. Id. at 117-19. Lund was (and still is) seeking 1)protection for a product design, 2) under a theory that is more diffusethan traditional infringement theory, namely that the trade dress hasbeen "diluted" by its use in connection with the product of acompetitor, and, 3) for an unlimited period of time. The Constitution'sPatent Clause, after all, specifies protection of product designs for"limited Times" only. U.S. Const. art. I, § 8, cl. 8. Nevertheless,the issue was one of first impression. The dilution statute wasrelatively new, and the limited case law was favorable to Lund'sposition. I therefore concluded that a preliminary injunction should issueon the dilution claim.7

On appeal, the First Circuit affirmed the infringement finding butvacated the dilution finding. I.P. Lund Trading ApS v. Kohler Co.,163 F.3d 27, 51 (1st Cir. 1998) [hereinafter "Lund II"]. In so doing, thecourt began the process of clarifying many of the issues raised in LundI — concerns about using infringement and dilution concepts tocreate protections for product designs otherwise unavailable under patentlaw. See Lund II 163 F.3d at 32-33. Other courts have followed suit.Although the law continues to permit trade dress protection for productconfigurations under certain circumstances, those circumstances are morelimited today than they appeared to be when this case was filed. SeeWal-Mart Stores, Inc. v. Samara Bros., Inc., __ U.S. __, 120 S.Ct. 1339,1344-46 (2000) [hereinafter "Samara Bros."]; Yankee Candle Co. v.Bridgewater Candle Co., 99 F. Supp. 2 d 140, 152-54 (D. Mass. 2000)[hereinafter "Yankee Candle"].

While the Court will not repeat its discussion in Lund I, it is usefulto briefly revisit the broader contours of trademark law beforeaddressing the most recent changes in the law as they affect Lund'saction.

1. The Trademark Landscape

The paradigm for a trademark was a two-dimensional symbol (word, name,device or combination thereof) adopted and used by a merchant to identifyher goods and distinguish them from articles produced by others. And theparadigm of trademark protection, via a suit for infringement, was toprevent the use of the same or similar marks by competitors in a way thatconfused the public about the actual source of the goods or service.8Lund II, 163 F.3d at 36. Thus, traditional trademark law "encouragesproduction of products of high quality `and simultaneously discouragesthose who hope to sell inferior products by capitalizing on a consumer'sinability quickly to evaluate the quality of an item offered for sale.'"Id. (citing Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 164(1995)).

Over time, courts extended trademark protection to cover not only wordsor symbols identifying products but also "trade dress" — a threedimensional product design or packaging.9 See Two Pesos, 505 U.S. at773-74 (product packaging in decor of restaurant); Chrysler Corp. v.Silva, 118 F.3d 56, 58 (1st Cir. 1997) (automobile design). Companiessuccessfully claimed trademark rights in a variety of productconfigurations over the last fifteen years.10 E.g., Two Pesos, 505U.S. at 770; Sunbeam Prods., Inc. v. West Bend Co., 123 F.3d 246, 252-57(5th Cir. 1997) (shape of a mixer); Kohler Co. v. Moen Inc., 12 F.3d 632,643-44 (7th Cir. 1993) (configuration of a faucet and faucet handle)[hereinafter "Kohler"]. Indeed, many courts, including the FirstCircuit, eschewed any distinctions between trademarks and trade dress.See Two Pesos, 505 U.S. at 773-74; Chrysler, 118 F.3d at 58; Kohler, 12F.3d at 643-44.

But the application of traditional trademark principles to productconfigurations raises unique problems which do not arise in word mark orproduct packaging cases.11 Namely, trade dress protection of productdesigns brings the Lanham Act into potential conflict with federal patentlaw by offering the possibility of indefinite protection of productdesigns from use by competitors, rather than the "limited Time[]"protection of the Patent Clause. Nevertheless, while several courtsreiterated these concerns, none invalidated the extension of trade dressprotection to a product's design on those grounds. But see Lund II, 163F.3d at 38 (functionality doctrine prevents a constitutional conflictbetween the Lanham Act and patent law); Kohler, 12 F.3d at 643 ("It isapparent, however, that perpetual trademark protection under the LanhamAct for a product configuration or design is not the equivalent ofimpermissible perpetual patent protection."); Esercizio v. Roberts,944 F.2d 1235, 1246 (6th Cir. 1991) (affirming trade dress protection ofnonfunctional automobile designs that were "primarily adopted forpurposes of identification and individuality") [hereinafter "Esercizio"].

Apart from constitutional concerns, commentators also raised otherquestions about the protection of product configurations as trade dress.12 With word marks and product packaging, it is rather obvious thatthese symbols do not describe the product with which they areidentified; those marks clearly serve source-identification purposes.See Gleiberman, supra,at 2042-43. On the other hand, product designs are not intended toidentity the producer. Indeed, they do not serve that purpose in mostinstances. See Lemley, supra, at 1704; Gleiberman, supra, at 2042-43. Forthe most part, unique product features increase the utilitarian oraesthetic value of the product for the consumer — a goal that isnot advanced by trademark law.

Finally, the application of a dilution theory to Lund's product, inaddition to infringement theory, exacerbates all of these concerns.Dilution protection is not only unlimited in time; it does not requireproof of consumer confusion as do infringement theories. The FTDA permitsthe owner of a "famous" mark to obtain injunctive relief against uses ofits mark which either tarnish or blur its distinctiveness.13Concerned about the breadth of the statute, one commentator suggestedthat the clear intention of the statute "seems to have been to restrictdilution doctrine to a relatively small class of nationally knowntrademarks whose fame is sufficiently great that the risk of blurring bymultiple noncompeting uses is significant." Lemley, supra, at 1698. But,at least in the years immediately following its passage, some courtsimposed no such limitations. E.g., Nailtiques Cosmetic Corp. v. SalonScis. Corp., 41 U.S.P.Q.2d 1995, 1998-99 (S.D. Fla. 1997) (holding"Nailtiques" famous for fingernail care products and diluted by"Pro-Techniques"); Wawa, Inc. v. Haaf, 40 U.S.P.Q.2d 1629, 1631 (E.D.Pa. 1996) (holding "Wawa" famous for convenience stores in Pennsylvaniaand surrounding states).

2. Recent Developments

The Supreme Court, the First Circuit, and other federal courts haveclarified a number of the legal standards applicable here, ultimately toLund's detriment.

In Lund II, the Court noted that trade dress infringement and dilutionshare three elements:

Despite different purposes being served, claims for protection against trademark and trade dress infringement, on the one hand, and dilution, on the other, share three common elements before the analyses diverge. Those elements are that marks (a) must be used in commerce, (b) must be non-functional, and (c) must be distinctive. While all such marks may be protected against infringement, under the FTDA only famous and distinctive marks are eligible for protection against dilution. No requirement for fame is present in trademark and trade dress infringement.

Lund II, 163 F.3d at 36. Raising concerns about the unique problems ofproduct design protection, the court then outlined three principles.

First, it is only appropriate to seek trade dress protection for aproduct design, rather than the more limited patent protection, when thedesign is non-functional. Moreover, the burden of provingnon-functionality of a product for which trade dress protection is soughtrests squarely on the shoulders of the party seeking that protection.Id. at 37.

Second, given the fact that product designs are usually intended foraesthetic or utilitarian, not source identifying, purposes, the FirstCircuit clarified the distinctiveness test. Lund must show "thatsomething in the design which is not functional serves primarily tosignify the source of the faucet and not primarily to signify that it isan aesthetically pleasing faucet." Id. at 42. The court rejected theargument that this "primary significance" test is "too stringent." Id."Where the protection of the product design itself is at issue, there isevery reason to hold to the usual stringent primary significance test inorder to minimize constitutional concerns." Id.

The Supreme Court went one step further. While a traditionalunregistered trademark is protected from infringement where a plaintiffshows that the mark is inherently distinctive, or that it acquiredsecondary meaning, the Court held that trade dress protection of aproduct design is available "only upon a showing of secondary meaning."Samara Bros., 120 S.Ct. at 1346. Its reasoning mirrored that of the FirstCircuit. The predominant function of word marks and product packaging isto identify the source of a product. Id. at 1344. In contrast, "consumerpredisposition to equate [product features] with the source does notexist." Id. Rather, the Court emphasized that "[c]onsumers are aware ofthe reality that, almost invariably, even the most unusual of productdesigns — such as a cocktail shaker shaped like a penguin —is intended not to identify the source, but to render the product itselfmore useful or more appealing." Id. Indeed, it suggests courts shouldexercise caution in finding a product configuration primarily serves as asource-identifier.

Finally, the dilution theory has been limited as well. The FirstCircuit held that a party seeking to establish "fame" of the trade dressfor protection against dilution "bears a significantly greater burdenthan the burden of establishing distinctiveness for infringementpurposes." Lund II, 163 F.3d at 33.

Lund, in short, faces an uphill battle. It must prove its VOLA faucetdesign is not functional, that it falls outside that class of productswhich consumers view as primarily useful or aesthetically pleasing, andthat it is famous within the meaning of the law. If Lund fails to meeteither the functionality or distinctiveness standard, the law affordsLund no protection even from competitors' direct copying and resale ofthe VOLA design under a different label. The Seventh Circuit expressed aparticularly apt sentiment over sixty years ago:

The law of unfair competition stresses business integrity, encourages legitimate trading, and protects good will against spoliation. However, it is not true that all acts done in the trade, which the average person would describe as unfair, are actionable. `As a manufacturer, one has a perfect right to make any article of commerce not covered by a patent monopoly. . . . As a distributor, however, he must respect those methods of honest and upright dealing which forbid one competitor from adapting practices which are now well understood to be unfair or fraudulent.'

Sinko v. Snow-Craggs Corp., 105 F.2d 450, 452 (7th Cir. 1939) (citingWilliam H. Keller Inc. v. Chicago Pneumatic Tool Co., 298 F. 52, 57 (7thCir. 1923)).

As discussed below, this case never crosses the line from what theordinary person would regard as unfair to unfairness under the LanhamAct. Lund cannot prove its product configuration has acquired secondarymeaning within the meaning of the law. It is likewise unable to establishthat its configuration has become "famous." And given these holdings, Ineed not reach the substantive dilution analysis.

III. DISCUSSION

The record shows that Lund produces an aesthetically pleasing faucet,which acquired some renown among members ofthe interior design trade. Quite clearly, this renown derives from thefact that Lund was the sole producer of single-control, wall-mountedfaucets in the United States for twenty years. When competitors joinedthe wall-mounted faucet market, Lund was helpless to prevent theirentry. It had not obtained a design patent on its faucet, and even if ithad, the patent would have expired before 1996.

Moreover, Lund cannot now claim trademark protection for certainaspects of its design, namely, the wall-mounted, single-controlelements. Those elements are functional. Even if their characteristicsserved as a brand-identifier for Lund after years of exclusive use,trademark protection of those functional elements would unduly interferewith legitimate competition in the faucet market. Lund has presentedevidence, however, that would support a finding that other aspects of itsproduct configuration are non-functional.

Nevertheless, even if these aspects of the VOLA are nonfunctional,Lund's evidence, when taken in the light most favorable to it, fails toshow that the VOLA design serves as a brand identifier. After years oftouting the product's beauty, winning awards for it, seeing the productin museums and architecture magazines, it is clear that the "primarysignificance" of the design is aesthetic.

None of Lund's consumer surveys suggest otherwise. They prove that thedesign signifies Lund to some consumers, while identifying Kohler andother manufacturers to others. Indeed, the evidence suggests that ifconsumers purchase the product because of its source, they do so becauseof the word mark "VOLA" — not because of the design. For thesereasons, Kohler is entitled to judgment as a matter of law on CountsI-VIII.

A. Summary Judqment Standard

Summary judgment is proper only "if the pleadings, depositions, answersto interrogatories, and admissions on file, together with theaffidavits, if any, show that there is no genuine issue as to anymaterial fact and that the moving party is entitled to a judgment as amatter of law." Fed. R. Civ. P. 56(c). "A factual dispute is material ifit `affects the outcome of the litigation,' and genuine if manifested by`substantial' evidence `going beyond the allegations of the complaint.'"Pignons S.A. de Mecanique de Precision, v. Polaroid Corp., 657 F.2d 482,486 (1st Cir. 1981) (citing Hahn v. Sargent, 523 F.2d 461, 464 (1st Cir.1975)). In ruling on a summary judgment motion, the Court "must view therecord and draw inferences most favorably to the opposing party." Id.

Thus, Rule 56(c) "mandates the entry of summary judgment, afteradequate time for discovery and upon motion, against a party who fails tomake a showing sufficient to establish the existence of an elementessential to that party's case, and on which that party will bear theburden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322-23(1986). Where the non-moving party bears the burden of proof on someissue at trial, the moving party need not produce evidence underminingthe non-moving party's case. Instead, the moving party may simply pointout to the district court the absence of evidence to support thenon-moving party's case. Id. at 325. The question then "`is not whetherthere is literally no evidence'" favoring Lund, but "`whether there isany upon which a jury could properly proceed to find a verdict'" inLund's favor. Caputo v. Boston Edison Co., 924 F.2d 11, 13 (1st Cir.1991) (citing De Arteaga v. Pall Ultrafine Filtration Corp., 862 F.2d 940,941 (1st Cir. 1988)).

B. Common Elements of Infringement and Dilution Claims

As discussed above, Lund II set forth the three shared elements of alltrade dress infringement and dilution claims: Marks must be (1) used incommerce, (2) non-functional, and (3) distinctive. LundII, 163 F.3d at 36. The first element — use in commerce — isplainly satisfied in this case. It is the latter two elements that requirediscussion.

C. Functionality

1. Legal Standard

"To be protected under the Lanham Act, a trademark or trade dress mustnot be functional." Id. The functionality doctrine marks the boundariesof trade dress protection from patent law. It "`prevents trademark law,which seeks to promote competition by protecting a firm's reputation,from instead inhibiting legitimate competition by allowing a producer tocontrol a useful product feature.'" Id. (citing Qualitex Co. v. JacobsonProds. Co., 514 U.S. 159, 164 (1995)). "The rule against functionalfeatures being protected as symbols of origin `is to prevent the grant ofperpetual monopoly by the issuance of a trade-mark in the situation wherea patent has either expired, or . . . cannot be granted.'" Id. at 37(citing Sylvania Elec. Prods., Inc. v. Dura Elec. Lamp Co., 247 F.2d 730,732 (3d Cir. 1957)).

To determine whether a product configuration is functional ornon-functional, the Court must inquire into the effects that grantingprotection to a product will have on competition. A product feature isfunctional "if it is essential to the use or purpose of the article or ifit affects the cost or quality of the article, that is, if exclusive useof the feature would put competitors at a significantnon-reputational-related disadvantage." Qualitex, 514 U.S. at 165. Theinquiry also turns in part "on whether granting protection to a mark`would permit one competitor . . . to interfere with legitimate(nontrademark related) competition through actual or potential exclusiveuse of an important product ingredient.'" Lund II, 163 F.3d at 37 (citingQualitex, 514 U.S. at 170)).

A product that contains some functional elements is not necessarilyexcluded from trade dress protection. Instead, an "`arbitrary combinationof functional features, the combination of which is not itselffunctional, properly enjoys protection.'" Id. (citing Taco Cabana Int'l,Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1119 (5th Cir. 1991)). Lund hasthe burden of proving nonfunctionality of those elements of the VOLAdesign that Lund claims constitute the "mark" and for which Lund isseeking protection. Id.

2. Application of the Functionality Doctrine to the VOLA Faucet Design

Kohler argues that: (1) Lund intended the VOLA to be an essentiallyfunctional design; (2) Lund touted its product as functional; and (3)Lund achieved its goal of functionality in its design such thatprotection of that design would unduly restrict competition in thesingle-control, wall-mounted faucet market. Lund responds that itsadvertising promotions are irrelevant and that the existence of "amultitude of shapes that can be used in the design of a single control,wall-mounted faucet" creates a genuine issue of material fact as tofunctionality. Plaintiffs' Opposition to Defendants' Four Motions forSummary Judgment at 9 [hereinafter "Lund Opp."].

As an initial matter, the Court notes that at least some elements ofthe VOLA faucet are functional. Cf. Lund II, 163 F.3d at 38. Forexample, the wall-mounted and single-control characteristics, which arethe most unusual aspects of the design, are purely functional elementsthat cannot be protected taken alone. If Lund were seeking protectionsimply of these elements, competition in the wall-mounted faucet marketwould be unduly restricted.

However, the Court also finds that the shapes, sizes, proportions, andornamentations of the VOLA's design, while minimalist in nature, are notsimply functional elements considered in combination. There existsevidence in the record fromwhich a jury could find that there are many other wall-mounted faucetdesigns available to competitors. See, e.g., Appendix to Defendants'Summary Judgment Motions, Exhibit 49 [hereinafter "Kohler App., Exh."].In effect, the other designs are non-functional variations on the sametheme.

Protecting Lund's design as trade dress would not unduly restrictcompetition. See Kohler, 12 F.3d at 643; Big Top USA, Inc. v. The WitternGroup, 998 F. Supp. 30, 43-44 (D. Mass. 1998). Indeed, Kohler's ownFalling Water II faucet outsells both the Falling Water I and the VOLAfaucets. Competing faucets are also sold at a price substantially lowerthan that charged for the VOLA. Accordingly, on the basis of the recordbefore the Court, Kohler's Motion for Summary Judgment of Functionalitymust be denied.

Nevertheless, even assuming a jury could find the VOLA designnon-functional, the Court finds that Lund has failed to establish thatthe design acquired secondary meaning.

D. Secondary Meaning

Whether a product design or mark has acquired secondary meaning is aquestion of fact. Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175,180 (1st Cir. 1993) [hereinafter "Boston Beer"]. The inquiry intodistinctiveness turns on "the total appearance of the product, not onindividual elements." Lund II, 163 F.3d at 39. Applying the stringent"primary significance" test to the facts of this case, the Court findsthat Lund has failed to meet its burden as to secondary meaning.

1. Legal Standard

In Samara Brothers, the Supreme Court held that trade dress in the formof a product's design (as opposed to packaging) can never be inherentlydistinctive.14 See 120 S.Ct. at 1346. Thus, Lund's VOLA design isdistinctive, and therefore protectible, only upon a showing of secondarymeaning.15 Secondary meaning occurs when, "in the minds of thepublic, the primary significance of a product feature or term is toidentify the source of the product rather than the product itself."Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 851 n. 11 (1982).

In Kellogg Co. v. National Biscuit Co., the Supreme Court first set outthe definition of secondary meaning applicable in product configurationcases. See 305 U.S. 111 (1938) [hereinafter "Kellogg"]. National BiscuitCo. ("Nabisco") brought suit against Kellogg to enjoin alleged unfaircompetition by the manufacture and sale of the breakfast food commonlyknown as "shredded wheat." Id. at 111. For more than ten years after theexpiration of the patent on the shredded wheat form (and the machinesresponsible for making that form), Nabisco was the exclusive manufacturerof shredded wheat. As a result of that exclusive use, Nabisco claimed anexclusiveright to the trade name "Shredded Wheat" and the exclusive right to makeshredded wheat biscuits pillow-shaped. Nabisco charged Kellogg with"passing off" its goods for those of Nabisco by using the name and shapeof Nabisco's biscuits. Id. at 112. Kellogg clearly packaged its productunder its own label and trade name.

The Supreme Court held that Nabisco had no right to exclusive use ofthe term "Shredded Wheat" as a trade name as that term "is the genericterm of the article, which describes it with a fair degree of accuracy."Id. at 112-13. While over time, and particularly during the time whenNabisco had a monopoly, many people associated the name by which theproduct was known with Nabisco's factory at Niagara Falls, that meaningwas not the primary significance of the term. Rather, Nabisco was obligedto show "that the primary significance of the term in the minds of theconsuming public is not the product but the producer." Id. at 118. This,the Court found, Nabisco had not done, despite spending $17 million inmaking the name a household word and identifying the product with itsmanufacture.

Similarly, the Kellogg Court made hash out of Nabisco's trade dressclaim under the same standard. The Court emphasized:

[A] particular manufacturer can no more assert exclusive rights in a form in which the public has become accustomed to see the article and which, in the minds of the public, is primarily associated with the article rather than a particular producer, than it can in the case of a name with similar connections in the public mind.

Kellogg, 305 U.S. at 120. Trademark law and fairness dictated only thatKellogg market the pillow-shaped biscuit "in a manner which reasonablydistinguishes its product from that of plaintiff." Id.

While Lund never secured a patent for the VOLA faucet in this case, thefacts and analysis required here track the Kellogg case. The centralinquiry before this Court is whether, in the minds of the relevantconsumers, the primary significance of the VOLA design is to identify thesource of the product, Kroin, rather than the product itself.16 SeeSamara Bros., 120 S.Ct. at 1343; Kellogg, 305 U.S. at 120; Lund II, 163F.3d at 41-42. Stated another way: "[S]omething in the [VOLA] designwhich is not functional" must serve "primarily to signify the source ofthe faucet and not primarily to signify that it is an aestheticallypleasing faucet." Lund II, 163 F.3d at 42.

Essentially, this means that Lund must set forth evidence from which ajury could find, by a preponderance of the evidence, that "a substantialportion of the consuming public"17 views the VOLA as primarilysignifying that the product comes from Kroin's business, even if thepublic does not know the name Kroin. Boston Beer, 9 F.3d 175, 182 (1stCir. 1993). "The design must be one that is instantly identified in themind of the informed viewer" as a Kroin design. Esercizio, 944 F.2d at1240. Moreover, Lund must prove that its design possessed secondarymeaning in the minds of the relevant consumers before Kohler's allegedlyinfringing or diluting actions transpired. Tone Bros., Inc. v. SyscoCorp., 28 F.3d 1192, 1201 (Fed. Cir. 1994); Perini Corp. v. PeriniConstr., Inc., 915 F.2d 121, 125-26 (4th Cir. 1990); Saratoga VichySpring Co. v. Lehman, 625 F.2d 1037, 1043 (2d Cir. 1980); Scott Paper Co.v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1231-32 (3d Cir. 1978).

Lund fails, as did Nabisco, if, despite a degree of association betweenthe VOLA design and Kroin, consumers view the VOLA primarily as anaesthetically pleasing or useful faucet design.18 See Boston Beer, 9F.3d at 182; Esercizio, 944 F.2d at 1240. Indeed, Lund is even morevulnerable than Nabisco. It has marketed its design precisely for itsbeauty, not because it alerted consumers to its source.

2. Proving Secondary Meaning

While secondary meaning may be established in a number of ways,"consumer surveys and testimony are the only direct evidence on thisquestion." Boston Beer, 9 F.3d at 182. The Court may also draw inferencesfrom a number of types of circumstantial evidence, including: (1) thelength or exclusivity of use of the design; (2) the size or prominence ofLund's enterprise; (3) the nature and extent of advertising and promotionof the design; (4) efforts made to promote a conscious connection, in thepublic's mind, between the design and the source; (5) the product'sestablished place in the market; and (6) proof of intentional copying.See Lund II, 163 F.3d at 42; Boston Beer, 163 F.3d at 182.

3. The VOLA Design Is not Distinctive

In my decision granting Lund's preliminary injunction, I originallyfound, on a truncated record, that Lund had demonstrated a likelihood ofsuccess of showing that the VOLA had achieved secondary meaning, but notconfusion. Lund I, 11 F. Supp. 2 d at 121. It then appeared thatpurchasers of high-end bathroom fixtures, including interior designers,knew the VOLA by sight, and "are moved to purchase the VOLA not justbecause it looks good, but because its design conveys status related toits unique source." Id.

To be sure, I am not bound by my findings at the preliminary injunctionstage. TEC Eng'g Corp. v. Budget Molders Supply, Inc., 82 F.3d 542, 545(1st Cir. 1996). This is particularly so here because both the law, asdescribed above, and the evidence changed. There are now three consumersurveys constituting the only direct evidence of secondary meaning.

a. Lund's Consumer Surveys

With respect to Lund's two consumer surveys, I make the followingfindings: First, assuming that Lund's surveys are reliable evidence ofsecondary meaning, the surveys conclusively demonstrate that the VOLA hasnot acquired secondary meaning. The design signifies Kroin to a someconsumers while signifying Kohler and other manufacturers to others.Therefore, the evidence does not show that consumers view the productconfiguration as signaling a single, unique source.19

Second, the Court finds that the surveys are insufficient, as a matterof law, as a basis for satisfying the stringent primary significancetest. Instead of producing evidence that consumers perceive the VOLA as aprimarily signifying source, the surveys provide only unquantifiable andunreliable evidence that there exists some degree of association betweenthe VOLA design and Kroin. Lund does notmeet its burden of proving that this "association" subordinates thefunctional and aesthetic purposes of the design.

i. The Rappeport Survey

In 1999, Lund commissioned Michael Rappeport, a founding partner of RLAssociates, a consumer research and consulting firm, to investigatewhether the VOLA had acquired secondary meaning.20 Rappeport confinedhis survey to a "major purchase influencing public" — retailers ofhigh-end lavatory products.21 He defined the specific universe "assalespeople who sell the product to the consumer and/or direct theconsumer to the product." Rappeport Rep. at 8. The Court infers thatthese retailers, as a general rule, are more knowledgeable than theaverage consumer of high-end plumbing fixtures because the retailers are"members of the trade."

Rappeport discovered retailers' views by employing a methodology knownas "mystery shopper survey." Id. Interviewers entered a targeted storeand behaved like a typical customer looking for a particular product. Thesalespersons did not know that they were respondents in a survey. Thus,the mystery shopper survey attempts to approximate more closely actualmarket conditions.

Interviewers handed salespersons one of three photographs, displayingeither the VOLA, the Falling Water I, or a control faucet made by Jado.The interviewer asked, "Do you carry this line?" If the salesperson askedthe interviewer to clarify what the interviewer meant by the firstquestion, the interviewer would ask, "Do you know who makes this line offaucets?" Based on the salesperson's reactions, the interviewer thenasked a series of follow-up questions and recorded the names of theproduct(s) shown by the salesperson. Id. at 9-10. This survey was used innumerous establishments in several cities across the country.

Of the eligible retailers who were shown a picture of the VOLA faucet(ninety-two), only twenty percent correctly identified its source.22Id. at 18. However, almost as many respondents — eighteen percent— actually believed the VOLA was put out by Kohler. Another tenpercent named a manufacturer other than Kroin and Kohler. Thirteen percentof respondents expressed their belief that the VOLA came from one sourcebut could not volunteer a name.

Meanwhile, almost half (forty-four percent) of retailers showna picture of theFalling Water I faucet correctly identified the source as Kohler.Rappeport concluded from his survey results that "regardless of thefaucet shown (even the Jado), a majority of the retailers believed thatone and only one company made a faucet of a given design." Id. at 22.

The law does not require the party alleging infringement or dilution toprove that consumers actually know the specific source of a product. See15 U.S.C. § 1127. This so-called "anonymous source" rule protectscompanies with a valid trademark in cases where the public might not knowthe plaintiff by name. Thus, it has been said that "[t]o establishsecondary meaning, it is not necessary that the public be aware of theidentity of the producer, but simply that the public associate the tradedress with a single source." Storck USA, L.P. v. Farley Candy Co.,797 F. Supp. 1399, 1406 (N.D. Ill. 1992). Here, although respondents arenot required to identify a particular source, their answers prove thatconsumers generally do not associate the VOLA with Kroin. Rather,consumers who associate the design with "one company" often have Lund'scompetitors in mind.

A fifty-percent figure (or higher) for consumer association of aproduct with one unique source is typically regarded as sufficient toestablish secondary meaning. Spraying Sys. Co. v. Delavan, Inc.,975 F.2d 387, 394 (7th Cir. 1992) ("While a 50-percent figure is regardedas clearly sufficient to establish secondary meaning, a figure in thethirties can only be considered marginal.") Rappeport's survey revealedthat sixty-one percent of respondents perceived that the VOLA originatedfrom one source. Rappeport Rep. at 18. But, at most, only thirty-threepercent of respondents associated that design with Kroin.23 Theremaining twenty-eight percent of respondents who believed the VOLA camefrom one source incorrectly identified Kohler or another manufacturer asthat source. One-quarter of all retailers did not know whether the tradedress was associated with one or more sources.

There can be no secondary meaning if the majority of consumers surveyed— and knowledgeable ones at that — believed the VOLA camefrom a single source, but when asked, it became clear that the vastmajority of consumers did not associate the design with Kroin.24 Cf.Lund II, 163 F.3d at 43.

In any case, even if these results show some brand identification, itis clear that they do not provide a basis for satisfying the primarysignificance test. There canbe no secondary meaning if the majority of consumers believe the VOLAcomes from a single source, but that same majority of consumers, whenasked, believes the design primarily signifies an "aesthetically pleasingfaucet." Lund II, 163 F.3d at 42.

In a product configuration case, there is a presumption that theproduct design does not serve as a brand-identifier. Samara Bros., 120S.Ct. at 1344. To rebut this presumption, Lund must do more than would berequired in a word mark or product packaging case. Specifically, Lundmust create an evidentiary basis for inferring that thesource-identifying function has subordinated its other functions.

Rappeport made no attempt to gauge the primary significance of the VOLAdesign in the minds of retailers by asking a follow-up question as torelative purposes the design serves. It is entirely possible —more, it is presumed — that all respondents associating the VOLAwith plaintiffs' business also perceive the VOLA as primarily signaling auseful or attractive faucet. Against this background, Rappeport's surveyprovides minute evidence of secondary meaning, if any at all.

ii. The Fong Survey

Lund hired Geoffrey Fong to conduct two surveys in Fall 1999.25Fong conducted a secondary meaning survey in New York City and Chicago.If the Court credits the Fong survey, the results also show that only asmall percentage of relevant consumers associate the VOLA with faucetdesigns from one company. In any case, Fong's survey is flawed in anumber of respects.

First, in designing his survey, Fong determined that it was reasonableto assess the level of secondary meaning for the VOLA among a subset of"ordinary" consumers — consumers that would be more likely to befamiliar with high-end bathroom faucets. Thus, Fong decided to survey"members of the [interior design and plumbing] trade and . . . otherindividuals who were in the market for high-end faucets." This narrowingof the universe of respondents from "ordinary" consumers was properbecause the respondents generally constitute the relevant branch of the"consuming public." Lund II, 163 F.3d at 42. Fong achieved this byinterviewing individuals at high-end plumbing supply stores and at theChicago Design Show.26 Fong Rep. at 50.

From there, Fong then narrowed the sample "[t]o ensure that respondentswere familiar with the VOLA faucet. . . ." Id. at 51. Respondents wereshown a photograph of the VOLA faucet (without names or identifyinginformation) and asked a screening question: "Are you familiar with thefaucet pictured in the photograph?" Id. Respondents who answered "No" tothis question were not included in Fong's survey results.27 Thereason given for this screening technique was to ensure that the surveywas conducted "among respondents who are familiar with the mark or thetrade dress. Such individuals would be members of the most relevantuniversebecause the goal of a secondary meaning survey is to assess acquireddistinctiveness rather than inherent distinctiveness." Id. at 49.

This move was questionable. Fong had already limited the "consumingpublic" to prospective purchasers of high-end lavatory fittings, includingmembers of the interior design and architectural trade. To further removeanyone who could not identify VOLA by sight stacks the deck in Lund'sfavor. Indeed, the numbers in this already limited constituency who couldnot identify the VOLA faucet speaks to the failure of Lund's promotionalefforts.28

Further, Fong's assistants asked only one question: "Do you associatethe design and appearance of this faucet with faucets from one company orwith faucets from more than one company?" of those 110 respondents,sixty-nine (or 62.7 percent) associated the "design and appearance" ofthe VOLA with faucets from one company.29 But apart from thedistortion in the sample, Fong did not ask any variation of the "primarysignificance" question. He concluded that a product has acquiredsecondary meaning when "a significant or substantial portion of therelevant universe associates the mark with a single source . . ." FongRep. at 48. "Associating" the mark with a single source is not enough if"in the minds of the public, the primary significance of a [mark] is toidentify the source of the product rather than the product itself."Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 851 n. 11 (1982). Theevidence must also prove that consumers view the VOLA design primarily asa brand-identifier — and not as an aesthetically pleasing or usefulfaucet design. Lund II, 163 F.3d at 182; Esercizio, 944 F.2d at 1240.

Evidence that 62.7 percent of respondents who are already familiarwith the VOLA associate the design with faucets from one company,assuming that percentage is appropriate (see footnote 30, supra), simplydemonstrates that the trade dress has some source-identifying ability andthat some consumers associate the design with one source. That resultdoes not lend support for the proposition that these same respondentsview the design primarily as a source-identifier as opposed to anaesthetically pleasing or useful design.30

In fact, even the "association" finding is flawed. Fong's survey failsto show whether its respondents associate the VOLA with the same specificsource, Kroin, or with other manufacturers as well. Cf. Boston Beer, 9F.3d at 182. Fong did not ask the sixty-nine respondents who associatedthe VOLA with faucets from one company to identify that "one company" todetermine whether respondents associated the VOLA specifically with Kroin(or with one unique but anonymous source).31 This is a glaring errorbecause the evidence must show that the trade dress has "`come throughuse to be uniquely associated with a specific source,'" even if consumersdo not know that source by name. Two Pesos, 505 U.S. at 766 n. 4 (citingRestatement (Third) of Unfair Competition § 13, cmt. e (Tent. DraftNo. 2, Mar. 23, 1990)). There can be no secondary meaning if the majorityof consumers believe the VOLA comes from a single source, but individualconsumers, when asked, associate the VOLA with manufacturers other thanLund. Cf. Lund II, 163 F.3d at 43; United States Blind Stitch Mach.Corp. v. Union Special Mach. Co., 287 F. Supp. 468, 471 (S.D.N.Y. 1968).

b. Kohler's Consumer Survey

Kohler hired Ivan Ross as a rebuttal expert to conduct a consumersurvey testing for secondary meaning. Like Lund's experts, Ross conductedhis surveys several years after the relevant time period, in April 2000.Ross essentially replicated Fong's study of secondary meaning, with someimportant modifications. The purpose of the modifications "was to testthe proposition that Dr. Fong would have found different results had heconducted his study with these modifications." Ross Rep. at 2.

Interviewing was conducted in five stores, each in different states,that sold wall-mounted and "high-end" faucets, including Kohler faucets.Ross showed respondents actual faucets, as opposed to photographs, withthe name of the source masked. Id. at 7. The respondents were then askedif they were familiar with the faucet. Regardless of whether therespondent indicated familiarity with the VOLA faucet, the respondentswere asked the follow-up questions. Like Fong, Ross next asked whetherthe respondents associated "the design and appearance of this faucet withfaucets from one company, or with faucets from more than one company?"Id. at 21. Ross then asked a question that Fong did not ask:

As you look at this faucet, which of the following reasons do you think primarily describes why it looks the way it does?

• To tell you who made it or put it out.

• To present a pleasing design or appearance or to make the product more useful.

• Primarily for some other reason.

Id.

Lund questions the value of this last question, arguing that it appearsto ask for the consumer's perception of the producer's intent indesigning the product rather than the consumer's perception of thedesign's significance. As the First Circuit has made clear, theproducer's intent is entitled "to little weight" in evaluating secondarymeaning. Lund II, 163 F.3d at 43.

The Court does not share Lund's view that this question has failed totest for secondary meaning. Kohler's rephrasing of the relevant questionplainly comes closer to the question raised in Samara Brothers. See 120S.Ct. at 1344 ("Consumers are aware . . . that, almost invariably, eventhe most unusual product designs . . . is intended not to identify thesource, but to render the product itself more useful or more appealing.")The question attempts to get at consumer perceptions of the purposesserved by the VOLA faucet design. As the logic behind Samara Brotherspredicts, consumers perceive the design as primarily signaling thedesign's aesthetic and utilitarian value.

Ross reports that a majority of all survey respondents (fifty-fivepercent) associated the VOLA faucet with faucets from more than onecompany. Ross Rep. at 12. The remaining forty-five percent associated thefaucet with faucets from one company.32 Only six percent ofrespondents believed the VOLA came from one company and that the designlooks the way it does primarily to "tell you who made it or put it out."Id.

Taken together, the Court finds that a reasonable jury could notconclude that the three consumer surveys prove the VOLA faucet hasacquired secondary meaning. Although the Court need not review theindirect evidence in light of consumers' documented views, considerationof the remaining evidence underscores the Court's finding of no secondarymeaning.

c. Circumstantial Evidence of Secondary Meaning

The Court may draw inferences as to secondary meaning from a number oftypes of circumstantial evidence, including: (1) the length orexclusivity of use of the design; (2) the size or prominence of Lund'senterprise; (3) the nature and extent of advertising and promotion of thedesign; (4) efforts made to promote a conscious connection, in thepublic's mind, between the design and the source; (5) the product'sestablished place in the market; and (6) proof of intentional copying.See Lund II, 163 F.3d at 42; Boston Beer, 163 F.3d at 182. Considerationof these factors conclusively demonstrates that there is no evidentiarybasis from which a jury could find that the VOLA has acquired secondarymeaning.

i. Length and Exclusivity of Use of Design

It is clear that the best, perhaps only, evidence of secondarymeaning in this case is Lund's long and exclusive use of the VOLAdesign. For more than twenty years Lund exclusively used the VOLAdesign in the United States.

"Trademark law has long embraced the tenet that five years ofcontinuous and exclusive use of a mark or trade dress generates apresumption of secondary meaning." Yankee Candle, 99 F. Supp.2d at 154.While Lund's evidence of long and exclusive use provides some evidence infavor of secondary meaning, that evidence is not sufficient. SeeKellogg, 305 U.S. at 118-19.

As described above, to a degree, it counts against Lund.

ii. Size or Prominence of Lund's Enterprise

In 1995, the year before the Falling Water I went on the market(February 1996), Lund sold only 866 VOLA faucets in the entire UnitedStates. Since 1995, Lund has sold anywhere from 972 to more than 1800faucets in a given year. This is not a large or notably prominententerprise in the United States, even among the subset of consumersinvolved in home renovations.

Even if the Court inferred that the VOLA achieved design icon status,and that it is firmly established in the sanitary fittings market, thisfactor does not provide a basis for a finding of secondary meaning. TheVOLA has consistently increased in sales over the last six years, and maycontinue to do so, but this does not counteract evidence that the designdid not achieve secondary meaning. Indeed, "market success may well beattributable to the desirability of the product configuration rather thanthe source-designating feature or combination of features." DuracoProds., Inc. v. Joy Plastic Enters., 40 F.3d 1431, 1452 (3d Cir. 1994)[hereinafter "Duraco"].

iii. Advertising and Efforts Made to Promote a Conscious Connection Between the Design and the Source

"[A]dvertising which encourages consumers to identify the claimed tradedress with the particular producer is some evidence of secondarymeaning." Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 292 (7thCir. 1998). As the Seventh Circuit has noted:

Advertising that touts a product feature for its desirable qualities and not primarily as a way to distinguish the producer's brand is not only not evidence that the feature has acquired secondary meaning, it directly undermines such a finding. It supports instead the inference that consumers consider the claimed trade dress a desirable feature of the product and not primarily a signifier of source.

Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 662 (7th Cir. 1995).Thus, it is the nature of Lund's advertising, more so than the amount,which may provide a basis for a finding of secondary meaning. Here, theevidence shows that Lund promoted the aesthetically pleasing andutilitarian features of its VOLA faucet rather than promoting it as abrand identifier.

Since 1988, Kroin has spent over $684,000 to promote VOLA fittings inthe United States, including over $443,000 on magazine advertising inprestigious American design magazines such as Architectural Record,Interior Design, and Interiors. (This advertising figure did not gotoward promoting the 111C faucet alone, but the whole line of VOLAfittings.) Kroin has even won awards and recognition for thedistinctiveness and effectiveness of its advertising campaign.

The advertisements themselves, however, draw consumer attention to theaesthetic and utilitarian design aspects of the VOLA, rather than itsbrand identification. For example, an Interior Design ad run in 1996states that the products pictured, which include the 111C faucet, are"manufactured with the utmost attention to detail and function" and "eachdesign is an understated expression of simplicity and timelessness."Kohler App., Exh. 6. The emphasis is primarily on the usefulness andattractiveness of the products.

In its Opposition, Lund points to testimony from various individualswho conclude that Kroin's advertising promotes a conscious connectionbetween the VOLA faucet and its source. See Lund Opp. at 39-40. But theirconclusory statements are not adequate. It is the nature of theadvertising itself and its success in promoting brand-identification— not how one or more individuals perceive it — thatdetermines whether the advertising actually promotesbrand-identification. As the court noted in Herman Miller, Inc. v.Palazzetti Imports & Exports, Inc. on this issue:

[T]he opinions reached by plaintiff's experts in the design field are not representative of the average consumer and are not based on any articulated factual foundation. Plaintiff must establish that the primary significance of the alleged trade dress in the minds of the consuming public is not the product, but rather the producer. Conclusory affidavits by experts in the field do not meet that burden of proof.

998 F. Supp. 757, 762 (E.D. Mich. 1998).

The truly devastating blow in the form of circumstantial evidence comesfrom Lund's own advertisements which associate the design with manydifferent retailers and sources, and sometimes with no source at all. TheFirst Circuit has noted, and it remains true, that the evidence in thiscase shows that the VOLA has been sold by "a number of differentcompanies in this country and has not been advertised here as coming fromLund." Lund II, 163 F.3d at 42. It is difficult for Lund to prove theacquisition of secondary meaning where the product design is sold by theauthority of Lund under several different word marks.33 See id.

Lund also points to unsolicited advertising of the VOLA paid for byretailers, magazine editors, and museums. Lund Opp. at 42-25. "Regardingthe `unsolicited media coverage' cited by plaintiff, that evidence`reflect[s] interest more in an unusual product [or individual] than inthe source of the product.'" Herman Miller, 998 F. Supp at 762 (citingDuraco, 40 F.3d at 1453. The faucet is also displayed in the Museum ofModern Art in New York City as the "VOLA" faucet with Jacobsen's nameattached. Lund Opp. at 83. The name Kroin does not appear in the faucet'sdisplay. Most importantly, the product is labeled with the mark "VOLA" onthe handle even though its sole source in the United States is Kroin.Kohler App., Exh. 36 at 54.

"It is true that the VOLA product has been much advertised orfeatured, but at times without any source attribution or with attributionto different sources." Lund II, 163 F.3d at 43. This is the most damagingcircumstantial evidence to Lund's case. It effectively preventsplaintiffs from establishing secondary "weaning in the absence ofprobative survey evidence to the contrary.

iv. The Product's Established Place in the Market

No evidence of market share has been presented to the Court. However,the clear implication from the evidence and representations of theparties is that Lund's market share is insignificant.

v. Proof of Intentional Copying

Proof of intentional copying may also be considered as evidence ofsecondary meaning. Id. at 42; Esercizio, 944 F.2d at 1239. To proveintentional copying, Lund must show that Kohler intentionally copied"down to the smallest detail" the VOLA faucet design. TEC Eng'g Corp. v.Budget Molders Supply. Inc., 927 F. Supp. 528, 534 (D. Mass. 1996).

The evidence does not show that Kohler slavishly copied the VOLA.Indeed, there are quite obvious differences between the VOLA and theFalling Water I, not the least of which is the display of the name"Kohler" on the Falling Water I. Here, the evidence shows Kohler hasexercised reasonable care to inform the public of the source of itsproduct.

To the extent that Kohler "copied" certain elements of the VOLAdesign, the copying does not constitute the "precise copying" whichyields a nearly identical product, as found in other cases. SeeEsercizio, 944 F.2d at 1239 (finding "precise copying" where carmanufacturer reproduced "the whole body" of a Ferrari automobile,including use of Ferrari's prancing horse logo and the model name"Testarossa"); M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 449 (4thCir. 1986) ("Other than slight differences in color and shadings, whichresult from slight changes in the silkscreening process, the two glassfrontpieces are identical.") Even had Kohler intended to copy the productconfiguration, the evidence would not be very probative: "[T]he copiermay very well be exploiting a particularly desirable feature, rather thanseeking to confuse consumers as to the source of the product." Duraco, 40F.3d at 1453. Thus, the alleged copying provides no basis for a findingof secondary meaning, especially given the failure of the survey evidenceto show source linkage between Kroin and its product.

In sum, the evidence presented proves Lund cannot make a successfulcase for secondary meaning in its VOLA faucet. As secondary meaning is anessential element of Lund's Lanham Act claims, Kohler is entitled tosummary judgment on Counts I-III of the Amended and SupplementalComplaint. The Court need not address the remaining elements of Lund'sfederal claims (i.e., likelihood of confusion, fame)

E. State Law Claims

In Counts IV-XIII, Lund brings several state dilution claims, as wellas claims for unfair and deceptive trade practices.34 As to thedilution and "palming off" allegations, distinctiveness is an essentialelement of the state unfair competition claims. See Astra Pharm. Prods.,Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1209 (1st Cir. 1983);International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912,916 (9th Cir. 1980) (citing cases from several circuits). Thus,defendants are entitled to judgment as a matter of law on Counts IV-VIIIas result of Lund's failure to prove distinctiveness of the VOLA.

As to the remaining state law claims alleging unfair competition ongrounds that do not require proof of distinctiveness (Counts IX-XIII),both parties failed to adequately brief these claims. The briefs do noteven state the essential elements of the five claims, nor do they drawthe Court's attention to the evidence that may support or undermine theclaims. The Court notes that several of the statutes appear to requireproof of "substantial injury" to Lund, and that evidence of injury doesappear to be lacking in this case.E.g., PMP Assocs., Inc v. Glove Newspaper Co., 366 Mass. 593, 596,321 N.E.2d 915, 917 (Mass. 1975); Gaidon v. Guardian Life Ins. Co. ofAmerica, 707 N.Y.S.2d 166, 167 (N.Y. A.D. 2000). However, the Courtcannot make an informed decision as to the remaining counts on the basisof the record before it. The parties have until November 2, 2000, to fileadditional materials as to the state statutory claims which do notrequire a finding of secondary meaning.

IV. CONCLUSION

For the reasons stated above, I find that there exists no genuine issueof material fact as to the VOLA's distinctiveness. No reasonable jurycould find that Lund's faucet design has acquired secondary meaning suchthat it is entitled to protection as trade dress. Therefore, Kohler'smotions for summary judgment as to Counts I-VIII are GRANTED.

SO ORDERED.

1. Section 43(a) of the Lanham Act provides:

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation 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 . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a), The Federal Trademark Dilution Act ("FTDA"), setforth in Section 43(c) of the Lanham Act, provides remedies for dilutionof famous marks:

(1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection.

15 U.S.C. § 1125(c). The terms of the Lanham Act are definedin section 45. See 15 U.S.C. § 1127.

2. The claims here actually involve the design of threesingle-control, wall-mounted lavatory faucet models which differ only inspout length. The faucets' model numbers are 111C, 121C, and 121CNOST. Forconvenience, the Court will refer to the faucets collectively as "theVOLA faucet" or the "111C faucet."

3. Throughout this opinion, I treat plaintiffs collectively as"Lund" and defendants collectively as "Kohler."

4. This figure includes advertising for fittings other than the 111Cfaucet.

5. The three holes in the "normal" sink are for the hot andcold spigots, and the water spout.

6. Kohler alleges that the VOLA flow rate of eighty pounds per squareinch of water pressure is too high for both federal and statestandards.

7. I noted:

On this truncated record, I am obliged to agree with the plaintiffs. The case law describes trade dress protection broadly . . . The sole court to have addressed the question of whether the dilution statute applies to a product's design and configuration has extended the Act's trade dress protection. Sunbeam Products, Inc. v. West Bend Co., 1996 WL 511639, at *13 (S.D. Miss. May 3, 1996), aff'd, 123 F.3d 246, 261 (1997) (finding "Mixmaster" blender's design as a whole to be protected against trade dress dilution). While there may be constitutional questions about such protection as applied to the facts of the case at bar, those concerns must wait for another day.

Lund I, 11 F. Supp.2d at 119.

8. Trademark infringement suits focus on the acts of competitorsdiverting sales by "passing off" one competitor's goods as those ofanother, thereby confusing the public as to the source of the product.The threshold question for a non-registered mark is whether, in trademarkparlance, it is "distinctive." A mark is considered distinctive when itrepresents a feature by which consumers "identify and distinguish" theproducer's goods "from those manufactured or sold by others and toindicate the source of the goods, even if that source is unknown."15 U.S.C. § 1027. When such a mark is either "inherently distinctive"or it acquires distinctiveness, i.e., acquires "secondary meaning" in theminds of the relevant public, trademark protection is triggered. TwoPesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992) [hereinafter"Two Pesos"].

9. For a fuller discussion of this evolution, see Mark A. Lemley, TheModern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687,1697-1701 (1999); Melissa R. Gleiberman, Note, From Fast Cars to FastFood: Overbroad Protection of Product Trade Dress Under Section 43(a) ofthe Lanham Act, 45 Stan. L. Rev. 2037, 2039-55 (1993).

10. Some plaintiffs even succeeded in protecting the features of theirproducts for which they had previously received a patent. E.g., Thomas &Betts Corp. v. Panduit Corp., 139 F.3d 277, 283 (7th Cir. 1998)(concluding that product configuration could be protected even though theoverall product was patented).

11. See David S. Welkowitz, Trade Dress and Patent — The Dilemmaof Confusion, 30 Rutgers L.J. 289, 299-300, 306-08 (1999); Gleiberman,supra, at 2040, 2055-61.

12. See Lemley, supra, at 1697-98, 1704-05; Gleiberman, supra,at 2043-44, 2066.

13. The original Lanham Act did not cover the actions ofnon-competitors appropriating a famous mark. Exxon Corp. v. OxfordClothes, Inc., 109 F.3d 1070, 1075 n. 6 (5th Cir. 1997) (noting that "afederal cause of action for trademark dilution was apparently notavailable until the Lanham Act was amended to include one in 1996"). Suchactions would obviously not deceive or confuse customers purchasing thegoods designated by famous marks; typically, different products wereinvolved. Nevertheless, the appropriation of a well-known mark could givea non-competitor an unfair and unearned advantage in the marketplace. Asa result, the initial mark would be "diluted," or disassociated from theproduct in connection with which it had been used. Traditionally, dilutionanalysis would, as the Act's legislative history makes clear, involve atrademark being used for a different product, for example, Buick aspirinor Kodak pianos. H.R. Rep. No. 104-374, 104th Cong., 1st Sess. (1995), at3 (citing "DUPONT shoes, BUICK aspirin, and KODAK pianos" as examples ofpotential dilution).

14. Typically, a trademark can be found to be distinctive in one oftwo ways. First, a mark is inherently distinctive if "`[its] intrinsicnature serves to identify a particular source.'" Samara Bros., 120 S.Ct.at 1343 (citation omitted). Second, a mark may acquire distinctivenesseven if it is not inherently distinctive. Id. The Samara Brothersdecision eliminated the former as a test for distinctiveness in productdesign cases.

15. The Supreme Court explained the origin of the phrase "secondarymeaning":

The phrase "secondary meaning" originally arose in the context of word marks, where it served to distinguish the source-identifying meaning from the ordinary, or "primary," meaning of the word. "Secondary meaning" has since come to refer to the acquired, source-identifying meaning of a non-word mark as well. It is often a misnomer in that context, since non-word marks ordinarily have no "primary" meaning. Clarity might well be served by using the term "acquired meaning" in both the word-mark and the non-word-mark contexts — but in this opinion we follow what has become the conventional terminology.

120 S.Ct. at 1343 n*.

16. Since Kroin is the sole distributor of the VOLA faucet in theUnited States, and Kroin does not reference Lund in any of itsadvertisements or promotional materials, Kroin is the "single" sourcewith which consumers must associate the VOLA design. For this reason, theCourt will refer to "Kroin" as the source of the VOLA in discussingsecondary meaning.

17. The "consuming public" can refer to "a particular trade or `branchof the purchasing public.'" Lund II, 163 F.3d at 42 (citing President &Trs. of Colby College v. Colby College-New Hampshire, 508 F.2d 804, 808(1st Cir. 1975).

18. As the Tenth Circuit held in Vornado Air Sys. v. Duracraft Corp.,"mere association" between a product's design and its source isinsufficient to establish secondary meaning; rather, the "primarysignificance of the design in the consumer's mind" must be "as a brandidentifier." 58 F.3d 1498, 1502 n. 7 (10th Cir. 1995).

19. The Court acknowledges that the outcome of the surveys might havebeen different if Lund had conducted them in 1996. However, the Courtplaces the consequences of the failure to do so at Lund's feet becauseLund carries the burden of proof.

20. Michael Rappeport, "Perceptions as to the Source of VariousFaucets" (Mar. 30, 2000) in Appendix to Plaintiffs' opposition toDefendants' Four Motions for Summary Judgment, Exh. 6, at 4 [hereinafter"Rappeport Rep."].

21. Actual or potential purchasers of high-end faucets are admittedlyhard to find, thus it is not improper to expand the universe of surveyrespondents to include salespersons who influence prospectivepurchasers. See Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 295(7th Cir. 1998) (when "the relevant market includes both distributors andultimate purchasers, the state of mind of dealers is important indetermining if secondary meaning exists").

22. Lund mischaracterizes this twenty percent identification figure as"unaided brand awareness," i.e., brand recognition without prompting. Ibelieve this figure is more appropriately characterized as "aided" brandawareness. Aided brand awareness exists when a person surveyed recognizesa brand when shown the mark or asked about the mark. For example, aidedbrand awareness exists where interviewers show respondents the mark"YAHOO" and respondents recognize the mark as representing an Internetsearch engine. Cf. Northern Light Tech., Inc. v. Northern Lights Club,97 F. Supp.2d 96, 114 n. 19 D. Mass. 2000) ("Aided brand awareness existswhen a person polled recognizes the brand Northern Light when asked aboutit.") By contrast, unaided awareness exists when interviewers askrespondents to name six search engines and respondents volunteer "YAHOO"among those six. Here, Rappeport's interviewers actually showedrespondents pictures of the VOLA faucet — the trade dress at issue— and twenty percent of respondents recognized the design as aKroin faucet. By contrast, unaided brand awareness would exist hadinterviewers asked, for example, "Name a single-control, wall-mountedlavatory faucet," and respondents volunteered "VOLA" or "Kroin" amongtheir answers.

23. This thirty-three percent figure is far below the rates at whichconsumers correctly identified product sources in cases finding secondarymeaning for product designs. E.g., Kohler, 12 F.3d at 633 ("[A] marketresearch survey of 273 licensed plumbers in six cities revealed thateighty-two percent of these surveyed identified the faucet as a Moenproduct, and eighty-three percent identified the handles as a Moenproduct."); Esercizio, 944 F.2d at 1240 (finding secondary meaning inFerrari automobile designs where survey evidence showed "73% properlyidentified a photograph of Daytona Spyder as manufactured by Ferrari and82% identified the Testarossa as a Ferrari product").

The Court arrives at the thirty-three percent figure by adding thepercentage of respondents who correctly identified the source of VOLA asKroin to the percentage of respondents who identified the VOLA as comingfrom one source but did not know the name. Rappeport Rep. at 18.

24. For two reasons, the Court finds that this thirty-three percentfigure actually overstates the rate at which ordinary consumers ofhigh-end lavatory fittings associate the VOLA with Kroin. First, theretailers are more knowledgeable about the faucet market. Consequently,retailers are able to correctly identify the source of the VOLA faucetmore often than the average consumer. Second, Rappeport's two initialsurvey questions are leading. His interviewers asked, "Do you carry thisline?" and "Do you know who makes this line of faucets?" Rappeport Rep.at 9-10. The interviewers suggest to the respondent that the fauxcustomer is asking about a product made by a single source. Kohlerrightly points out that, as a result of its leading form, the questiondoes not even provide a reliable measure of consumer association, muchless the primary significance of the VOLA design.

25. Fong is a member of the Department of Psychology at the Universityof Waterloo in Ontario, Canada. Geoffrey T. Fong, Ph.D. "Report on theResults of Likelihood of Confusion and Secondary Meaning Surveys" (Mar.29, 2000), in Appendix to Plaintiffs' Opposition to Defendants' FourMotions for Summary Judgment, Exh. 5, at i [hereinafter "FongRep."].

26. Out of 110 respondents, seventy-eight respondents (or seventy-fivepercent) listed their profession as being "in the trade" (e.g., interiordesigners and architects). Fong Rep. at 61. Twenty-six people (ortwenty-five percent) were in an unrelated profession, and the remainingsix individuals did not disclose their profession.

27. Fong does not reveal how many respondents were not familiar withthe VOLA faucet. Fong Rep. at 54. At the hearing on these motions, Kohlerrepresented that more than seventy percent of respondents did notrecognize the VOLA by sight. See Transcript of Summary Judgment Hearing,July 19, 2000, at 56. The Court does not have copies of the completedquestionnaires to confirm this figure.

28. Indeed, if Kohler's consumer survey is any indication of how manysurvey respondents do not recognize the VOLA design by sight, it islikely that Fong excluded more than seventy percent of the relevantconsumers from his survey results. When Kohler's expert Ivan Rossconducted a similar study, only sixteen of eighty-six respondents (or18.6 percent) reported being familiar with the VOLA faucet on sight. IvanRoss, Ph.D., "Report on Rebuttal Studies of (1) Secondary Meaning of VOLA111C Faucet and (2) Likelihood of Confusion between VOLA 111C and KohlerFalling Water I Faucets" (April 20, 2000), in Appendix to Plaintiffs'Opposition to Defendants' Four Motions for Summary Judgment, Exh. 7, at 12[hereinafter "Ross Rep."]. Taking a seventy-percent exclusion figure as aconservative estimate, it becomes clear that Fong's results showing that62.7 percent of respondents associated the design and appearance of theVOLA with faucets from one company does not really equate to 62.7 percentof the consuming public at all. A more accurate figure would probably bein the area of nineteen percent (i.e., sixty-three percent of a groupthat only represents thirty percent of consumers).

29. However, respondents who were not "in the trade" (twenty-six)exhibited a much lower rate (42.3 percent) of single-sourceidentification. These respondents are the prospective purchasers of theVOLA faucet, and the evidence must show that it is among these consumersthat the VOLA has acquired secondary meaning.

30. In a product configuration trade dress case, this Court isextremely skeptical of a consumer survey that merely asks whetherconsumers "associate" a faucet design with faucets from one company orwith faucets from more than one company. It seems obvious that manyindividuals, when confronted with a photograph of a single faucet design(and a wall-mounted one at that) , will believe the design emanated froma single source. Rappeport's survey essentially confirmed the Court'ssuspicion when it concluded, "regardless of the faucet shown (even theJado [control faucet]), a majority of the retailers believed that one andonly one company made a faucet of a given design." Rappeport Rep. at 22.The Court appreciates Lund's reasons for avoiding more probativequestions for fear of proving too much, as happened here.

31. Lund argues that authority from other courts may be read to acceptFong's generic "one company" question as probative evidence of secondarymeaning in product configuration cases. See Stuart Hall Co. v. AmpadCorp., 51 F.3d 780, 789 (8th Cir. 1995) ("We remind the district courtthat Stuart Hall need not show that consumers know their name; theshowing required is that consumers associate the trade dress with asingle source."); Herman Miller, Inc. v. Palazzetti Imports & Exports,Inc., 998 F. Supp. 757, 762 (granting summary judgment where plaintifffailed to establish secondary meaning under Stuart Hall formulation). Asan initial matter, the Court notes that the showing required is notmerely "that consumers associate the trade dress with a single source."This association test does not equate to the more stringent "primarysignificance" test first established in Kellogg, and applicable here. Therelevant test is that consumers view the trade dress as primarily servingto identify the product's source. See Lund II, 163 F.3d at 42. The Courtcannot agree that an answer to Fong's "one company" question, withoutfurther explanation, can shed any light on the issue of secondary meaningin a product configuration trade dress case. In a case such as this,where consumers may view any given faucet as "a single thing coming froma single source" but where follow-up questions reveal that even the mostknowledgeable respondents are not identifying the faucet with the sameunique source, the one simple question is insufficient.

32. This lower "association" figure confirms that Fong's resultsoverstated the actual level of single-source association among bothrespondents who reported they were familiar with the VOLA and those whowere unfamiliar with the faucet.

33. For example, the VOLA has been marketed in several advertisementssimultaneously under two names — Kroin and Vitra Form. One such adstates:

Kroin and Vitra Form, two independent companies dedicated to craftsmanship and progressive design, have introduced a comprehensive series of products, manufactured with the utmost attention to detail and function. The result of this collaboration is a program of sanitary fittings, glass basins and sinks with integral countertops, available in a variety of colors and finishes for residential and commercial use.

Kohler App., Exhs. 10-11. The ad never identifies Lund or Kroin as thesole manufacturer of the VOLA faucet, which is prominently displayed inseveral pictures in the ad. Moreover, the ad gives the distinctimpression that the VOLA is the product of "collaboration" between "twoindependent companies" — not one company, Kroin.

More importantly, the VOLA design is prominently displayed inadvertisements identified with at least six sources other than Kroin inwhich Kroin's name does not appear at all. These other sources includeCherry Creek, Davis & Warshow, Inc., Alchemy, Hastings, and Bates &Bates. Kohler App., Exhs. 14-15, 19, 21, 23, 25-26. Although these othersources primarily consist of retailers, as opposed to manufacturers, theadvertisements do not promote brand-identification of the VOLAfittings.

34. Lund's Amended and Supplemental Complaint states the followingclaims: Count IV, dilution under Cal. Bus. & Prof. Code § 14330 (West2000); Count V, dilution under Ga. Code Ann. § 10-1-451(b) (1999);Count VI, dilution under 765 Ill. Comp. Stat. Ann. 1036/65 (West 2000);Count VII, dilution under Tex. Bus. & Com. Code Ann. § 16.29 (West2000); Count VIII, dilution under N.Y. Gen. Bus. Law § 360-1(McKinney 2000); Counts IX-X, unfair competition under Mass. Gen. LawsAnn. ch. 93A §§ 2 and 11 (West 2000); Count XI, unfair competitionunder Cal. Bus. & Prof. Code §§ 17000 et seq. (West 2000); Count XII,unfair competition under 815 Ill. Comp. Stat. Ann. 505/1 et seq. and510/1 et seq. (West 2000); Count XIII, unfair competition under N.Y.Gen. Bus. Law § 349 (McKinney 2000).