ORDER ON ODORITE'S MOTION FOR SUMMARY JUDGMENT
Primarily, this is a trademark and trade dress case under the LanhamAct, 15 U.S.C.A. § 1051 et seq. It also involves reversepassing-off, false advertising, and various state commercial tort claims.The Butcher Company, Inc. ("Butcher"), is a manufacturer of industrialcleaning supplies, including cleaning solutions, and dilution control anddispensing units for those solutions. Butcher alleges that thedefendants, Guy Bouthot and Bouthot Construction, doing business as TheOdorite Company ("Odorite"), infringed its trademarks and trade dress byoffering competing products with similar names and by copying the colorand number-coding system it uses to identify its products. Butcher movedfor a preliminary injunction, and Odorite moved for summary judgment.
Butcher's trademark and trade dress claims fail because Butcher has notdemonstrated a likelihood that consumers will be confused as to thesource of the goods. That is the sine qua non of trademark/trade dressinfringement. There is no evidence supporting Butcher's other claimsexcept those based upon allegedly false advertising regarding the qualityof certain products. Accordingly, Odorite's Motion for Summary Judgmentis GRANTED except as to the claim of false advertising on comparabilityof Powerball and Looking Good; as to that issue, judgment is RESERVED.
A. Defining the Summary Judgment Record
In Butcher's Response to Odorite's Statement of Material Facts itrepeatedly denies and qualifies Odorite's factual statements without therecord citation required by Local Rule 56(c). Instead, it relies uponassertions that the credibility of the affiant on whose affidavit thestatement relies is at stake and the argument that it cannot reply to themotion without further discovery. See Pl.'s Resp. to Def.'s Statement ofMaterial Facts ¶¶ 3, 6, 8, 10, 13, 16, 18-23.
Butcher's assertion that credibility issues preclude summary judgmentrests on a sentence from the advisory committee's note to the 1963Amendment to Federal Rule of Civil Procedure 56: "Where an issue ofmaterial fact cannot be resolved without observation of the demeanor ofwitnesses in order to evaluate their credibility, summary judgment isinappropriate." But the First Circuit has stated that it "iswell-established that a mere challenge to the credibility of a movant'switnesses without any supporting evidence does not raise a trialworthyissue of fact," and that
a bare assertion that the opposing party's uncontroverted evidence might be disbelieved is insufficient to resist judgment as a matter of law on an issue as to which the party resisting judgment bears the burden of proof. Were it otherwise, Rule . . . 56 could be rendered virtually useless, merely on the strength of the nonmovant's supposition that the movant's uncontroverted evidence might be disbelieved.
Favorito v. Pannell, 27 F.3d 716, 721 (1st Cir. 1994) (citations andinternal quotation marks omitted); accord Schoonejongen v. Curtiss-WrightCorp., 143 F.3d 120, 130 (3rd Cir. 1998) ("[I]f a moving party hasdemonstrated the absence of a genuine issue of material fact . . .concerns regarding the credibility of witnesses cannot defeat summaryjudgment. Instead, the nonmoving party must present affirmative evidencein order to defeat a properly supported motion for summary judgment.").Here, Butcher has the burden of proof. It therefore cannot avoid summaryjudgment by merely intoning the mantra "credibility."
Butcher's alternative argument that summary judgment is precludedbecause itneeds further discovery fails for two reasons. First, Butcherhas not complied with Federal Rule of Civil Procedure 56(f), requiring"affidavits of a party opposing the motion that the party cannot forreasons stated present by affidavit facts essential to justify theparty's opposition." Fed.R.Civ.P. 56(f) (2000) (emphasis added); accordRicci v. Alternative Energy Inc., 211 F.3d 157, 159 n. (1st Cir.2000) ("A party who wishes to forestall ruling on summary judgmentbecause material discovery has not been taken is obliged to file anaffidavit under Federal Rule of Civil Procedure 56(f)."). Second,discovery is now complete and Butcher has provided no additionalevidence. Therefore, in accordance with Federal Rule of Civil Procedure56(e) and the corresponding Local Rule, I treat as admitted all factsthat Butcher has not properly denied or qualified.
B. Undisputed Facts
Preliminaries resolved, the following undisputed facts are properlysupported by the summary judgment record. Prior to 1998, Odoritedistributed Butcher cleaning products. Def.'s Statement of MaterialFacts (DSMF) ¶ 2. The products included Butcher cleaning solutionsand Butcher Command Centers. The Command Centers are wall-mounted devicesthat hold and dispense the cleaning solutions. DSMF ¶ 2. Butcher'scleaning solutions include Speedball®, an all-purpose cleaner;Look®, a glass cleaner; Bath Mate™, an acid-free washroomcleaner; and Triple Team™, a citric acid washroom cleaner. DSMF¶ 8. Each of these cleaning solutions has a particular color andnumber. DSMF ¶ 8.
Butcher terminated Odorite's distributorship in 1998. DSMF ¶ 4. Atthat time, Odorite had several Command Centers in inventory. DSMF¶ 5. Odorite offered to return those Command Centers to Butcher, butButcher declined the offer. DSMF ¶ 5. Odorite then informed Butcherthat Odorite planned on supplying non-Butcher cleaning solutions tofacilities with Butcher Command Centers installed. DSMF ¶ 5. Butcherdid not respond. DSMF ¶ 5.
In early 1999, Odorite began selling its own line of cleaningsolutions. The line includes Powerball, Looking Good, Bath Buddy, andTriple Play, DSMF ¶ 6, which compete, respectively, with Butcher'sSpeedball®, Look®., Bath Mate™, and Triple Team™products. DSMF ¶ 8. Odorite chose the name of each of its productswith the intent that it be similar, but not identical, to the name of thecompeting Butcher product. DSMF ¶ 10. Odorite chose a color andnumber for each of its products that is the same as the color and numberof the competing Butcher product. DSMF ¶ 8. Odorite chose thenames, colors, and numbers in this manner to convey comparability tocustomers and to facilitate use. DSMF ¶¶ 8, 10.
Odorite's representatives consistently make clear to customers thatOdorite no longer carries Butcher products but that Odorite has acompeting line of comparable products that are less expensive thanButcher's. DSMF ¶¶ 14, 15, 18.1 Odorite sells its products to"municipal entities, including school districts; owners of officebuildings, healthcare facilities, and restaurants; and contract cleaningcompanies." DSMF ¶ 19. The individuals who make purchasing decisionsare "typically maintenance department supervisors, who are closelyfamiliar with the products availablein the market." DSMF ¶ 19. Odorite sells a dilution controlunit manufactured by Knight, and also retrofits Butcher CommandCenters so that they accommodate Odorite products. DSMF ¶ 12-13.
Butcher admits that there "is no evidence that any person has ever beenconfused as to the source of the Odorite dilution control products."DSMF ¶ 21.
A. Federal Trademark and Trade Dress Claims
Butcher has asserted trademark and trade dress infringement claims inCounts I and II of its Complaint. In Count I, Butcher alleges thatOdorite has infringed Butcher's registered trademarks Speedball® andLook® through the use of the marks Powerball and Looking Good, under15 U.S.C.A. § 1114(1) (1997 & West Supp. 2000). In Count II, Butcheralleges that Odorite has infringed Butcher's unregistered trademarks BathMate™ and Triple Team™ through the use of the marks BathBuddy and Triple Play, as well as its trade dress,2 under 15U.S.C.A. § 1125(a)(1) (1998 & West Supp. 2000).
(1) Prerequisites to Trademark and Trade Protection
Lanham Act protection of trademark and trade dress has one majorpurpose: to "avoid confusion or mistake." I.P. Lund Trading ApS v.Kohler Co., 163 F.3d 27, 36 (1st Cir. 1998). In that way it protectsboth the public and the trademark/trade dress owner. Id. Trademarks andtrade dress can be protected from infringement if they are: (1) used incommerce; (2) nonfunctional; and (3) distinctive. Id. In this casethere is no dispute that the marks and the dress have been used incommerce, and that the marks are nonfunctional. Odorite does argue,however, that Butcher's marks are not distinctive, and that Butcher'sdress is both functional and not distinctive. I conclude that Butcher'strademarks are distinctive; I assume without deciding that Butcher'strade dress is both nonfunctional and distinctive.
There are five ranges in the spectrum of distinctiveness: (1) generic;(2) descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. I.P.Lund, 163 F.3d at 39. Generic marks are at the least-protected end ofthe spectrum; they are "terms that have passed into common usage toidentify a product, such as aspirin, and can never be protected." BostonBeer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir. 1993).Descriptive marks are in the middle of the spectrum; a descriptive mark"can be protected, but only if it has acquired a `secondary meaning' bywhich consumers associate it with a particular producer or source." Id."`A term is descriptive if it forthwith conveys an immediate idea of thegoods.'" Equine Technologies, Inc. v. Equitechnology, Inc.,68 F.3d 542, 544 (1st Cir. 1995) (quoting Blinded VeteransAss'n v. Blinded Am. Veterans Found., 872 F.2d 1035, 1040 (D.C.Cir. 1989)). At the most-protected end of the spectrum "are suggestive,arbitrary and fanciful terms that can be protected without proof ofsecondary meaning. These terms are considered `inherently distinctive.'"Boston Beer, 9 F.3d at 180. "`A term is suggestive if it requiresimagination, thought and perception to reach a conclusion as to the natureof goods.'" Equine, 68 F.3d at 544 (quoting Blinded Veterans, 540 F.2d at1040). "Whether a term is generic, descriptive, or inherently distinctiveis a question of fact." Boston Beer, 9 F.3d at 180.
No reasonable jury could find any of Butcher's marks —Speedball®, Look®, Bath Mate™, and Triple Team™— anything less than suggestive. They are,therefore, inherently distinctive and I need not choose among thecategories of suggestive, arbitrary, or fanciful. (It is beyondperadventure that they are not descriptive because they simply donot call to mind an "immediate idea of the goods.")
The central issue in Counts I and II is whether Odorite's marks anddress do infringe. Likelihood of confusion as to the source of theproduct is the gravamen of trademark and trade dress infringement. SeeI.P. Lund, 163 F.3d at 43.
The First Circuit has identified eight factors to be weighed indetermining likelihood of confusion:
(1) the similarity of the marks; (2) the similarity of the goods; (3) the relationship between the parties' channels of trade; (4) the relationship between the parties' advertising; (5) the classes of prospective purchasers; (6) evidence of actual confusion; (7) the defendant's intent in adopting its mark; and (8) the strength of the plaintiff's mark.
I.P. Lund, 163 F.3d at 43 (citations and internal quotation marksomitted). "No one factor is conclusive as to likelihood of confusion,and the district court must consider each." Aktiebolaget Electrolux v.Armatron Int'l, Inc., 999 F.2d 1 (1st Cir. 1993); accord Keds Corp. v.Renee Int'l Trading Corp., 888 F.2d 222 (1st Cir. 1989).
Not every factor is always apt in each case. I.P. Lund, 163 F.3d at43; Int'l Ass'n of Machinists & Aerospace Workers v. Winship GreenNursing Ctr., 103 F.3d 196, 201 (1st Cir. 1996). Determinationsregarding the eight factors and the culminating determination of thelikelihood of confusion are factual, but summary judgment is nonethelessappropriate if, "taking the facts before the court and all reasonableinferences therefrom most favorably to" the nonmoving party, noreasonable jury could find in the nonmoving party's favor. CMM CableRep., Inc. v. Ocean Coast Props., Inc. 888 F. Supp. 192, 200 (D.Me. 1995)(Hornby, J.). In this case, to prevail on summary judgment Odorite mustdemonstrate that no reasonable jury could find a likelihood ofconfusion.
(a) The Similarity of the Marks and Dress
Similarity of the marks is determined by examining the "total effect ofthe designation rather than comparing individual features." GreentreeLabs., Inc. v. G.G. Bean, Inc., 718 F. Supp. 998, 1000 (D.Me. 1989);accord Aktiebolaget, 999 F.2d at 4; Volkswagenwerk Aktiengesellschaft v.Wheeler, 814 F.2d 812, 817 (1st Cir. 1987). "Words may be recognized assimilar because of sound, appearance, and meaning . . . and a finding ofsimilarity may be based on appearance alone." Volkswagenwerk, 814 F.2d at817 (citations omitted). The similarity of trade dress is determined byexamining the total effect of the dress, not its individual features.Cf. I.P. Lund, 163 F.3d at 39 (stating that the inquiry into trade dressdistinctiveness "turns on the total appearance of the product, not onindividual elements").
In this case, there are obvious similarities in the look and sound ofthe marks. Each of Odorite's marks shares a word or root with thecorresponding Butcher mark ("ball," "look," "bath," and "triple").Conversely, each of Odorite's marks includes a word different from or inaddition to the words in the corresponding Butcher mark. The marks'meanings have vague similarities, both in the abstract and in context.In the abstract, Speedball® and Powerball both convey a sportsimage; in context they convey the idea of a particularly fast oreffective cleaner. In the abstract Look® and Looking Good havevisual connotations; in context they convey the idea of a spruced upappearance. In the abstract Bath Mate™ and Bath Buddy convey thesame idea; in context they convey the idea of a bathroom cleaner. In theabstract Triple Team™ and Triple Play both convey a sports image;in context they convey the concept of an effective cleaner. Thesesimilarities in meaningare, however, quite attenuated, and I do not weigh them heavily.
Likewise, there are similarities but also important differences inthe trade dress. The labels Butcher uses for its products include theproduct's name, number, and description, as well as diagrams indicatinghow the product is used, safety instructions, and the words "CommandCenter" over a simple logo. Odorite's labels include the same informationand similar diagrams, and use a similar layout, but also include anOdorite logo (either "Mr. Odorite," a humanoid figure carrying paint andvarious cleaning supplies, or "Mr. Powerball," the same figure carryingpaint and a bouncing ball). The Odorite labels omit the words CommandCenter, and include instead the words "Odorite Company" in a bold,stylized font, along with Odorite's address and phone numbers. InButcher labels, the background is partly black and partly the product'scolor, and the fonts are primarily white. The Odorite labels use whiteand the product's color as background, with fonts appearing in theproduct's color on the white background, and in white on the coloredbackground.
With respect to both the trademarks and trade dress the weight of thesimilarities is greatly reduced by the prominent appearance of theOdorite name on every product Odorite sells. The clearly displayed nameof the manufacturer considerably reduces the likelihood that otherwisesimilar marks will be confused. See, e.g., Aktiebolaget, 999 F.2d at 4-5(affirming an injunction prohibiting the use of the mark "Leaf Eater" inisolation as infringing the mark "Weed Eater" but allowing its use inconjunction with the words "Flowtron" or "Vornado," on goods that weresimilar in a broad sense but had dissimilarities in intended use andcosmetics); Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc.,718 F.2d 1201, 1206-07 (1st Cir. 1983) (noting that the presence of thedefendant's house name "Beckman" in conjunction with the brand name"ASTRA" on the defendant's blood analyzer reduced the likelihood that itwould be confused as a product of the plaintiff drug maker AstraPharmaceutical Products, but finding that marks were nonetheless similarfor the purposes of summary judgment review); Pignons S.A. de Mecaniquede Precision v. Polaroid Corp., 657 F.2d 482 (1st Cir. 1981) (findingthat while the defendant's mark "Alpha" on a line of cameras was similarto the plaintiff camera manufacturer's mark "Alpa," the total effect ofthe defendant's mark, which included the prominent appearance of thedefendant's name "Polaroid" in close proximity to the mark "Alpha""minimize[d], if . . . not eliminate[d], the possibility that Polaroid'smark might be confused with Pignons'"); Fisher Stoves, Inc. v. AllNighter Stove Works, 626 F.2d 193, 194-95 (1st Cir. 1980) (finding thatappearance of defendant's name on a woodburning stove reduced thelikelihood of confusion resulting from similar trade dress, but notingthat "display of the manufacturer's name is not always determinative ofthe confusion issue").
In sum, this factor weighs against finding a likelihood of confusion.
(b) Similarity of the Goods
The goods are exactly similar, in the sense that each Odorite productserves the same purpose as the corresponding Butcher product.Accordingly, this factor weighs in favor of finding a likelihood ofconfusion.
(c) Relationship Between the Parties' Channels of Trade3
Channels of trade refer to the distribution methods and markets inwhich theproducts are sold. See Pignons, 657 F.2d at 488; Best Flavorsv. Mystic River Brewing Co., 886 F. Supp. 908, 914-15 (D.Me. 1995)(Hornby, J.). In this case, the summary judgment record is inadequatefor me to make any firm conclusion regarding the relationship between theparties' channels of trade other than the bare observation that theproducts have, in some instances competed, with one another. For thepurpose of summary judgment, however, I will assume that the products aredistributed by the same methods and sold in the same markets, and Itherefore weigh this factor in favor of finding a likelihood ofconfusion.
(d) Relationship Between the Parties' Advertising
Again, the summary judgment record is inadequate for me to make anyfirm conclusion regarding the relationship between the parties'advertising. The piecemeal evidence I have before me does not allow forany meaningful comparison. Neither party has produced any evidenceregarding whether, for example, they advertise in the same trademagazines, or at the same trade shows. But again, for the purpose ofsummary judgment, I will assume a strong similarity and I therefore weighthis factor in favor of finding a likelihood of confusion.
(e) Classes of Prospective Purchasers
This court has noted that "[t]he eight-factor confusion test is notapplied to assess confusion in the abstract; it is focused on thelikelihood that commercially relevant persons or entities will beconfused." CMM Cable Rep., Inc. v. Ocean Coast Props., Inc.,888 F. Supp. 192, 200 (D.Me. 1995) (Hornby, J.); accord Astra, 718 F.2d at1206-07 ("If likelihood of confusion exists, it must be based on theconfusion of some relevant person; i.e., a customer or purchaser."). Imust consider the possibility of both point-of-sale confusion andpost-sale confusion.
a. Point-of-Sale Confusion
Bouthot employs a "compare-and-save" marketing strategy and alwaysinforms prospective purchasers that Odorite products are different fromButcher products. This weighs very heavily against a finding of alikelihood of confusion. Purchasers who are told that the product theyare buying is an Odorite product that is comparable to but less expensivethan a Butcher product simply cannot reasonably be confused regarding theproduct's source.
Odorite also argues that the possibility of point-of-sale confusion isreduced because purchasers in the industry are sophisticated, and theirpurchases involve an initial expenditure of several hundred dollars. SeeDef.'s Mot. for Summ. J. at 12-13. It is clear that there is "lesslikelihood of confusion where the goods are expensive and purchased aftercareful consideration." Astra, 718 F.2d at 1206. Thus, in this case, atleast with respect to initial purchases when customer relationships areestablished, the likelihood of confusion is reduced by the expense of thepurchase and the sophistication of the purchasers.
b. Post-Sale Confusion
The inquiry regarding classes of prospective purchasers does not stopat the point-of-sale; I must also consider the possibility of post-saleconfusion. See I.P. Lund, 163 F.3d at 44; Chrysler Corp. v. Silva,118 F.3d 56, 59 (1st Cir. 1997). See generally III J. Thomas McCarthy,McCarthy on Trademarks and Unfair Competition 23:7 (4th ed. 1996). Thisconsideration does not relate to the possibility of confusion at resale,but "rather to the risk that non-purchasers, who themselves may be futureconsumers, will be deceived." I.P. Lund, 163 F.3d at 44. Inthe post-sale context, the focus remains on whether commercially relevantpersons will be confused. See I.P. Lund, 163 F.3d at 44 (noting that thepost-sale confusion risk is that "non-purchasers, who themselves may befuture consumers, will be deceived") (emphasis added); Astra, 718 F.2d at1206 ("If likelihood of confusion exists, it must be based on theconfusion of some relevant person; i.e., a customer or purchaser.").
In this case, Butcher argues that there is a likelihood that a varietyof people will suffer post-sale confusion, including "janitors whoactually use the Defendants products, visiting janitors and purchasingagents, and other people who interact with the Defendants' customers andcome into contact with the Defendants' products but do not actually hearthe Defendants' `compare and save' sales pitch."4 Pl.'s Objection toDef.'s Mot. for Summ. J. at 6. The plaintiff paints two scenarios inwhich this confusion could arise. In the first, a janitor who usesOdorite products and is dissatisfied with them may believe that they areButcher products. This janitor's reports back to a supervisor orpurchasing agent could result, Butcher argues, in adverse consequences toits reputation and future sales. Pl.'s Objection to Def.'s Mot. forSumm. J. at 7. In the second, a janitor may mistakenly believe thatOdorite's products are privately-labeled Butcher products, and "uponchanging jobs or receiving a promotion, he may purchase or advocate thepurchase of the less expensive `privately labeled' Odorite products."Pl.'s Objection to Def.'s Mot. for Summ. J. at 7-8.
These possibilities are nothing but speculative. The summaryjudgment record simply does not include any evidence that the janitors dohave influence over buying decisions or that there is any real risk thateither of the scenarios the plaintiff fears will actually come to pass.Butcher has submitted an affidavit which states that training janitorsoften involves overcoming language and literacy barriers, Swidorski Aff.at ¶¶ 3-4, but it is relevant only to whether janitors may beconfused, not to whether their confusion matters — i.e., to whetherthey are commercially relevant.5 Because there is no evidence of alikelihood of post-sale confusion among commercially relevant persons, Iconclude that it is not a danger in this case.
(f) Evidence of Actual Confusion
The First Circuit has noted that "[w]hile a showing of actual confusionis not required to establish infringement, an absence of actualconfusion, or a negligible amount of it, between two products after along period of coexistence on the market is highly probative in showingthat little likelihood of confusion exists." Aktiebolaget, 999 F.2d at4. Applying this principle, the First Circuit has found that little orno evidence of actual confusion over periods of three and one-halfyears, Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 377 (1st Cir.1980), four years, Pignons, 657 F.2d at 490-91, and six years,Atkiebolaget, 999 F.2d at 4, strongly indicate against a likelihood ofconfusion.
In this case the products have coexisted for one and one-half years.Butcher admits that there is no evidence of actual confusion. Itargues, however, that "[a]t this stage in the proceedings" the absence ofevidence of actual confusion means that "this factor cannot be applied."Pl.'s Mot. for Prelim. Inj. at 18. Odorite argues that the absence ofevidence of actual confusion is "strong evidence that consumers areunlikely to confuse" them. Defs.' Mot. for Summ. J. at 14. I findneither argument convincing: I will apply the factor, but I cannot weighthe absence of evidence of actual confusion too heavily because ofthe relatively short period of time in which the products have coexisted.Accordingly, I find that the absence of evidence of actual confusionweighs in Odorite's favor, but I do not give it the near-determinativeweight that the First Circuit has accorded it in cases where the productshave coexisted for a long period.
(g) The Defendant's Intent
The relevant question in weighing the defendant's intent has beenphrased in a variety of ways. E.g., I.P. Lund, 163 F.3d at 44 (phrasingthe question as whether the defendant intended to copy); Star, 89 F.3d at11 (whether the defendant intended to take advantage of the plaintiff'sgoodwill and promotion efforts); Keds, 888 F.2d at 222 (whether thedefendant intended to "capitalize on the popularity" of the plaintiff'sproduct); Atkiebolaget, 999 F.2d at 3 (whether the defendant acted in "badfaith"); Astra, 718 F.2d at 1208 (whether the defendant intended to"deceive . . . or benefit from [the plaintiff's] reputation"). Thiscourt has noted that the question is whether the defendant was "trying inany fashion to take advantage of [the plaintiff's] good will,reputation, and market recognition, or whether it was simply using itsown name without any such intent." Best Flavors, 886 F. Supp. at 917.However the question is phrased, the answer is not very important: theFirst Circuit has stated that while intent may be probative of likelihoodof confusion, Star, 89 F.2d at 11, it should not be accorded great weightbecause, "`[s]trictly, intent, or lack thereof, does not affect the eyesof the viewer.'" I.P. Lund, 163 F.3d at 45 (quoting Silva, 118 F.3d at 59n. 3) (alteration in original).
In this case, there is no evidence that Odorite intended to pass offits products as Butcher's: Odorite did not intend to deceive. Odoritedoes admit, however, that it intended to approximate Butcher's trademarksand used elements of Butcher's trade dress, and that it did so with theintent of conveying to customers the comparability of Odorite's productsto Butcher's products. In that respect, Odorite did intend to takeadvantage of Butcher's goodwill, reputation, and market recognition.Odorite actions were taken with a view toward facilitating comparison toButcher's popular products and increasing its own market share. Icannot, however, see how this is any more than marginally probative of alikelihood of confusion. Accordingly, I weigh this factor in Butcher'sfavor, but not heavily.
(h) Strength of the Marks
"In assessing a mark's strength, the trier of fact considers evidenceof the length of time the mark has been used, its renown in theplaintiff's field of business, and the plaintiff's actions to promote themark." Star, 89 F.3d at 11. The only evidence in the summary judgmentrecord regarding the strength of Butcher's marks and dress is that theyhave been in use for approximately ten years, and that several hundredthousand units of cleaning solution have been sold. Viewing thisevidence in the light most favorable to Butcher, I assume that it issufficient to make Butcher's marks "strong," and I therefore weigh thisfactor in favor of finding a likelihood of confusion.
(i) Review and Conclusion
The factors weighing against finding a likelihood of confusioninclude: (a) the dissimilarity of the marks, largely because of thepresence of Odorite's name on the products; (e) the sophisticated classesof prospective purchasers and their information (with respect topoint-of-sale confusion because buyers are always informed that theproducts are Odorite's, not Butcher's, and with respect to post-saleconfusion because there is no evidence that post-sale confusion is aconcern in this case); and (f) no actual confusion, because the productshave competed for a year and one-half and there is no evidence thatanyone has ever been confused. The factors weighing in favor of findinga likelihood of confusion include: (b) the similarity of the goods; (c)the channels of trade; (d) the relationship between the parties'advertising; (g) Odorite's intent; and (h) the strength of Butcher'smarks and dress. Weighing the factors against each other, I concludethat no reasonable jury could find a likelihood of confusion. It istrue, of course, that in terms of simple numbers there are only threefactors weighing against finding a likelihood of confusion but fivefactors in favor of finding a likelihood of confusion. Nonetheless, theformer are determinative in this case. It would be unreasonable for ajury to conclude that there is a likelihood of confusion as to sourcewhere (1) the product bears the Odorite name; (2) all purchasers are toldthat they are buying an Odorite product, not a Butcher product; (3) thereis no evidence of any risk of post-sale confusion; and (4) there is noevidence of actual confusion despite a year and one-half of coexistence.
Accordingly, I GRANT Odorite's Motion for Summary Judgment with respectto the trademark and trade dress infringement claims in Counts I and IIof Butcher's Complaint.
B. Reverse Passing-Off and False Designation of Origin
In Count III of its Complaint, Butcher alleges that Odorite's placementof its own cleaning solution labels on Butcher Command Centerdilution-control dispensing units constitutes "reverse passing-off" (alsocalled reverse palming-off) and "false designation of origin," inviolation of Section 43(a) of the Lanham Act, 15 U.S.C.A. § 1125(1998 & West Supp. 2000). ("Passing-off" is trying to make your goodsappear to be someone else's; "reverse passing-off" is claiming thatsomeone else's goods are actually yours. See Lipton v. Nature Co.,71 F.3d 464, 474 (2nd Cir. 1995); Web Printing Controls Co. v. Oxy-DryCorp., 906 F.2d 1202, 1203 n. 1 (7th Cir. 1990).) Reverse passing-off"may or may not be actionable in the First Circuit." Big Top USA, Inc.v. Wittern Group, 998 F. Supp. 30, 52 n. 13 (D.Mass. 1998).6 BecauseOdorite has not argued that reverse passing-off is not actionable in theFirst Circuit, I will assume without deciding that it is.
The claim fails because there is no evidence whatsoever that Odoritehas falsely designated the origin of any product. More specifically,there is no evidence that Odorite has ever passed off the Butcher CommandCenter as its own product: it has not concealed, removed, or obscured thewords "Butcher Command Center," which is embossed on the dispensingunits.7 DSMF ¶ 13. The Butcher CommandCenter is, in essence, a container. It has places on it to affixlabels indicating the products it contains. No reasonable jurycould find that the fact that Odorite has replaced Butcher's productlabels with its own product labels — so that the dilution controlunits accurately indicate the products they contain-falsely designatesthe origin of the Command Center when the Command Center itself bearsthe words "Butcher Command Center." The cleaning solution labels clearlyindicate the source of the cleaning solutions and only the source ofthe cleaning solutions; they simply do not indicate the origin of thedilution control unit. Moreover, there is no evidence whatsoeverthat Odorite has ever put its own labels on Butcher Command Centersthat actually do contain Butcher cleaning solutions. I GRANT Odorite'sMotion for Summary Judgment on Count III.
C. The Lanham Act False Advertising Claim
In Count IV of its Complaint, Butcher alleges that Odorite has engagedin false advertising in violation of Section 43(a) of the Lanham Act, 15U.S.C.A. § 1125(a) (1998 & West Supp. 2000). Butcher bases its falseadvertising claim on assertions that Odorite has falsely represented on acost comparison sheet that it offers an "Odorite Dilution Control Unit"for sale,8 and that it has falsely represented that its products arecomparable in quality to Butcher's. Odorite responds that it does offera dilution control unit for sale, albeit one manufactured by Knight, andthat its products are comparable in quality to Butcher's.
I conclude that the words "Odorite Dilution Control Unit" on the costcomparison sheet are not false on their face because they do notexplicitly or implicitly claim that the unit is manufactured by Odorite.The words appear on the cost-comparison sheet only incidentally; thesheet is not directed at selling dilution control units, but rather theassociated cleaning solutions, and there is no price for or descriptionof the unit. To the extent any implication can be drawn that Odoriteoffers for sale a dilution control unit, it is just that: that Odoriteoffers for sale a dilution control unit, not necessarily its own brand ofdilution control unit. And that implication is true: Odorite offers aKnight unit for sale.
On the other issue — the comparable quality of Odorite productsto Butcher's, Odorite has submitted the affidavit of its owner andpresident, Guy Bouthot, that the products are comparable. Butcher hasresponded by submitting the affidavit of an expert, Michael Atwater, whoopines that Butcher's products Look® and Speedball® are in someways equivalent and in some respects superior to Looking Good andPowerball. Odorite has moved to strike Atwater's affidavit on thegrounds that Butcher did not designate him as an expert in accordancewith the scheduling order. I DENY Odorite's motion. To support itssummary judgment motion, Odorite offers Bouthot's affidavit that theproducts are comparable. Odorite failed to designate Bouthot as anexpert. Either his testimony is expert and likewise subject to beingstricken or neither affidavit is expert testimony. (I do not therebydecidethat comparability is a matter for expert testimony.)
Thus, there is a dispute as to whether Looking Good and Powerball arecomparable in quality to Look® and Speedball®. Is it a genuineissue of material fact? The assertion that products are "comparable" inquality may well be nonactionable "puffery." See 4 McCarthy onTrademarks and Unfair Competition § 27:38 (4th ed. 1996) ("`Puffing'may . . . consist of a general claim of superiority over a comparativeproduct that is so vague, it will be understood as a mere expression ofopinion. For example, vague advertising claims that one's product is`better' than that of competitors' can be dismissed as mere puffing thatis not actionable as false advertising."); Nikkal Indus., Ltd. v.Salton, Inc., 735 F. Supp. 1227, 1234 n. 3 (S.D.N.Y. 1990) (noting that astatement that one product was "better" than its competitors was "mere`puffing'" and "not actionable as false advertising"). The parties havenot briefed that issue, and I will not construct arguments for them. Ifthis case is not otherwise resolved within three weeks, however, I invitesupplemental briefing on the false advertising issue as it relates to"comparability," such briefs to be filed by January 26, 2001.
With respect to the false advertising claim based on Odorite'srepresentations that Bath Buddy and Triple Play are comparable to BathMate™ and Triple Team™, I GRANT Odorite's Motion for SummaryJudgment. The Atwater Affidavit does not address these products, andButcher has not presented any other evidence disputing Odorite'srepresentations.
D. The Maine Common Law Trademark, Trade Dress, and Unfair CompetitionClaims and the Maine Deceptive Trade Practices Claim
The parties have treated the Maine common law trademark, trade dress,and unfair competition claims asserted in Count V of the Complaint, aswell as the Maine Deceptive Trade Practices Act claim under 10 M.R.S.A.§ 1212 (1997), asserted in Count IX, as identical to the Lanham Actclaims. I do the same. Accordingly, I GRANT Odorite's Motion for SummaryJudgment on Counts V and IX of the Complaint except to the extent theyare based on the false advertising issue discussed supra in Part II.C. ofthis Order.
E. Unlawful Interference with Contractual Relations and UnlawfulInterference with Advantageous Business Relations
In Count VI of its Complaint Butcher asserts claims for unlawfulinterference with contractual relations and unlawful interference withadvantageous business relations. In Maine, "[t]o succeed on a tortiousinterference claim, [the plaintiff must] establish (1) `the existence ofa valid contract or prospective economic advantage;' (2) `interferencewith that contract or advantage through fraud or intimidation;' and (3)`damages proximately caused by the interference.'" Gordan v. Cummings,756 A.2d 942, 946 (Me. 2000) (quoting James v. MacDonald,712 A.2d 1054, 1057 (Me. 1998). Butcher has entirely failed to respond toOdorite's argument that Butcher has not presented any evidence of fraudor intimidation. Accordingly, I consider these claims abandoned and IGRANT Odorite's Motion for Summary Judgment on Count VI of theComplaint.
F. The Trespass to Personal Property and Conversion Claims
Butcher asserts trespass to chattel and conversion claims in Counts VIIand VIII of its Complaint. Neither party has alerted me to anydifference between these torts that is relevant to this case, and I treatthem identically. The claims are based on the fact that Odoritereconfigured Butcher Command Centers to accommodate Odorite products.Evidently, the reconfigured Command Centers are the ones that Odorite hadpurchased prior to the time Butcher terminated its distributorship.Odorite retained these units with Butcher's permission.
The Maine Law Court has stated that the "`gist of conversion is theinvasion of aparty's possession or right to possession'" of goods. Withers v.Hackett, 714 A.2d 789, 800 (Me. 1998) (quoting Gen. MotorsAcceptance Corp. v. Anacone, 197 A.2d 506, 524 (Me. 1964). It hasarticulated three
necessary elements to make out a claim for conversion . . . : (1) a showing that the person claiming that his property was converted has a property interest in the property; (2) that he had the right to possession at the time of the alleged conversion; and (3) that the party with the right to possession made a demand for its return that was denied by the holder.
Withers, 714 A.2d at 800. The third element is only necessary, however,if the holder took the property rightfully. Id. Generally, trespass topersonal property involves dispossessing another of the property orinterfering with another's present or future possession of the property.Restatement (Second) of Torts §§ 217-220 (1965).
In this case, there is no evidence in the summary judgment record thatButcher owned the Command Centers, that it had any right to possession ofthe reconfigured Command Centers, or that it made a demand for theirreturn that Odorite denied. They simply were not Butcher's property.Thus, Butcher has not satisfied any of the three conjunctive elements ofthe tort of conversion, nor the right to possession required for trespassto personal property. Accordingly, I GRANT Odorite's Motion for SummaryJudgment on Counts VII and VIII of Butcher's Complaint.
I GRANT Odorite's Motion for Summary Judgment on all claims in theComplaint except the false advertising claim based on the representationthat Looking Good and Powerball are comparable in quality to Look®and Speedball®, on which judgment is RESERVED. I DENY Odorite'sMotion to Strike the Affidavit of Michael Atwater, and I treat as MOOTOdorite's Motion to Strike the Affidavit of Laura Swidorski. Finally,because Butcher's Motion for Preliminary Injunction did not raiseOdorite's allegedly false representations regarding the comparablequality of its products as grounds for the motion, and because no otherclaims remain, I treat it as MOOT.9
1. Butcher's Response to the Defendant's Statement of Material Factsdenied this with printouts from Odorite's Internet site that showedOdorite's allegedly infringing products for sale in a manner that did notemploy the compare-and-save strategy. In response, Odorite requested andwas granted permission to file a supplemental statement of facts, whichstated that the appearance of the products on its Internet site was thetemporary result of a contractor's mistake and that the products nolonger so appear. Butcher did not respond to the supplementalstatement, and I therefore deem the facts contained thereinadmitted.
2. Count II does not actually state the basis for the claim, butmerely references the first 42 paragraphs of the Complaint. The sentencein the text is based on how the parties treat the Count in theirmemoranda.
3. Factors three, four, and five — the relationship between theparties' channels of trade, the relationship between the parties'advertising, and the classes of prospective purchasers — aregenerally treated together in the First Circuit. Star Fin. Servs., Inc.v. AASTAR Mortgage Corp., 89 F.3d 5, 10 & n. 3 (1st Cir. 1996); EquineTechnologies, 68 F.3d at 546 & n. 5; Atkiebolaget, 999 F.2d at 3 & n. 3.I keep them distinct here because of the relative importance of theclasses of prospective purchasers, but I note that the lines betweenthese factors are particularly blurry and that some elements couldappropriately be discussed under any of the three factors.
4. The record does not describe who "visiting janitors and purchasingagents" are or how they may be confused.
5. Because I find the Swidorski Affidavit irrelevant, I treatOdorite's Motion to Strike it as MOOT.
6. Reverse passing-off is a different claim than one based on theLanham Act's prohibition against using a "word, name, symbol, or device,or any combination thereof" in a way "likely to cause confusion, or tocause mistake, or to deceive as to the affiliation, connection, orassociation of such person with another person, or as to the . . .sponsorship or approval of his or her goods." 15 U.S.C.A. § 1125(a)(1998 & West Supp. 2000) (emphasis added). Butcher's Complaint did notassert the latter claim, but its Response to Odorite's Motion for SummaryJudgment asserts that "[w]hether the Defendants' actions of placing theirown product labels on dilution control units marked `Butchers®' and`Command Center®' fosters confusion" is a trialworthy issue. Even ifButcher had asserted that claim in its Complaint, Butcher's laterassertion would be incorrect: the issue is not trialworthy because, inresponse to Odorite's argument that all it has done is label productsaccurately, Butcher has not produced any evidence that Odorite's actionsdo confuse commercially relevant consumers as to affiliation,connection, association, sponsorship, or approval.
7. In its Response to the Defendant's Statement of Material Facts,Butcher denies Odorite's assertion that it has never covered up,obliterated, or removed the words "Butcher's Command Center" on theButcher dilution control units. Butcher's denial cites Paragraph 36 ofthe Complaint. The Complaint does not support that denial: it states thatOdorite has covered up Butcher's cleaning solution product labels onButcher Command Centers, not that Odorite has done anything to the wordsButcher Command Center on the units themselves. Moreover, in itsResponse to the Defendant's Motion for Summary Judgment, Butcher assertsthat "[w]hether the Defendants' actions of placing their own productlabels on dilution control units marked `Butchers®' and `CommandCenter®' fosters confusion" is a trialworthy issue. Thus, myunderstanding is that Butcher's reverse passing-off claim is based onOdorite's placement of its own cleaning solution labels on ButcherCommand Centers, not that Odorite has done anything to the words on theunits themselves.
8. The only evidence of this that Butcher has offered is an Odorite"cost comparison sheet." See Pl.'s Mot. for Prelim. Inj. at 26; SferesAff. Ex. 2. The comparison sheet is headed "Odorite Dilution ControlUnit vs. Butchers Command Center Cost Comparison," below which appears atable listing prices for cases of Odorite and Butcher products. Thetable facilitates cost comparison of the cleaning solutions by breakingout the cost per gallon and/or the cost per quart of each product. Thesheet contains no other representations whatsoever; it does not indicatea price for the "Odorite Dilution Control Unit" nor describe the unit inany way.
9. I note that the section addressing the false advertising claim inButcher's Motion for Preliminary Injunction alleges that Odorite's use ofthe numbers one, two, sixteen, and nineteen to designate its productsconstitutes a false representation that it sells nineteen products. Thatallegation does not, however, appear in the false advertising count ofButcher's Complaint. The passing reference to the allegation that ismade in the general introductory section of the Complaint, see¶¶ 34-35, is insufficient to put Odorite on notice of the claim, asevidenced by the fact that Odorite did not discuss it in its Motion forSummary Judgment. Therefore, whatever dubious merit the claim may have,I do not consider it because it was not adequately pleaded.