PILOT CORPORATION OF AMERICA v. FISHER-PRICE

, 3:04cv977(SRU).

344 F.Supp.2d 349 (2004) | Cited 2 times | D. Connecticut | November 9, 2004

RULING ON MOTION FOR PRELIMINARY INJUNCTION

The Pilot Corporation of America ("PCA") seeks to enjoinFisher-Price, Inc. and Mattel, Inc. (collectively "Fisher-Price")from selling a product that PCA believes infringes its federallyregistered trademark and its common-law "trade dress" rights.Because PCA has not shown it is likely to succeed on the meritsof its claim, its motion is denied.

I. Facts

The following facts are either undisputed or likely to beestablished by PCA at trial.

A. The Magna Doodle

Until recently, Fisher-Price sold a children's drawing toynamed "the Magna Doodle." The Magna Doodle consists primarily ofa drawing screen made up of a lattice of small hexagons, eachhexagon containing iron filings in suspension. The fluid in whichthe filings are suspended is opaque, and is viscous enough tohold the filings in place against gravitational force, but notviscous enough to hold them in place against magnetic force. Whenthe Magna Doodle's "stylus" — a plastic rod tipped with a magnet— is drawn across the reticulated screen, the nearby filings arepulled to the top of the opaque suspension and become visible onthe screen. The screen's lattice structure ensures an evendistribution of filings. The Magna Doodle also has an "eraserbar," which sweeps a magnetic rod across the back of the screen,bringing all filings to the bottom of the suspended fluid, effectively "cleaning" the board.

B. The Agreement

PCA owns U.S. Patent No. 4,143,472 ("the '472 patent"),entitled "Displaying Magnetic Panel and its Display Device,"which covers the drawing screen used in the Magna Doodle. PCAalso owns the federally registered trademark "Magna Doodle."

Since 1978, Magna Doodle products have been available on themarket, though the mark was not always owned by PCA, and theproduct itself has not always been manufactured by Fisher-Price.Details of those earlier licensing arrangements are not relevant.

On January 1, 1992, PCA entered into a licensing agreement("the Agreement") with Tyco, giving Tyco the exclusive right touse the Magna Doodle trademark in connection with the manufactureand sale of drawing toys covered by the '472 patent. In return,Tyco agreed to purchase from PCA 100% of its annual requirementof panels for incorporation into its drawing toys bearing theMagna Doodle mark. The Agreement required the parties to agree byOctober 15 of each year on the number and price of panels to besupplied. Failure to do so would result in the Agreementterminating at the end of the calendar year. If the Agreementterminated, Tyco was permitted to continue to sell its existinginventory of licensed products for 180 days after the terminationdate.

The Agreement also provided that Tyco could use the MagnaDoodle mark only in a manner approved by PCA.

In 1994 the parties amended the Agreement. The pertinent partsof the amendment stated: WHEREAS, PCA and Tyco wish to amend the definition of the licensed "mark" to include those trademarks used by Tyco in connection with line extensions for the "MAGNA DOODLE" product on behalf of PCA. . . . "Mark" will mean the trademarks "MAGNA DOODLE", "MAGGIE DOODLE", "MAGNA DOODLE DAN", "THE ART OF IMAGINATION" or any other trademarks which may subsequently be used by Tyco in connection with the marketing and sale of goods in the "MAGNA DOODLE" line pursuant to license from PCA. . . . C. Introduction of the Doodle Pro

In 1997, Mattel merged with Tyco, and Mattel's subsidiary,Fisher-Price, assumed the rights and obligations of the 1992Agreement as amended. Soon after the merger, Fisher-Pricecomplained to PCA about the price of the panels used in the MagnaDoodle. As a result, in 2000 and 2002, PCA lowered the price onthe panels it sold to Fisher-Price. These price reductions didnot satisfy Fisher-Price, and, in 2003 Fisher-Price informed PCAthat if it did not lower its prices again, Fisher-Price wouldterminate the Agreement. PCA did not lower its prices, andFisher-Price did not place an order for panels before October 15,2003. Accordingly, the Agreement terminated on December 31, 2003.

Under the terms of the Agreement, Fisher-Price was allowed tosell off its existing supply of Magna Doodles until 180 daysafter January 1, 2004, which it did. At the same time, however,Fisher-Price began to develop and market a replacement product,using panels purchased from a third-party vendor. The new productis named the "Doodle Pro."1 The new product and all itspackaging is nearly identical to the last version of the MagnaDoodle sold by Fisher-Price. The only significant differencesbetween the two products are their logos. The Magna Doodleproduct bore the label "Magna Doodle" in stylized purple script.The words "The Original" appeared in a red oval above the name,and the slogan "The world's favorite way to doodle!" appearedbelow. Additionally, the Magna Doodle packaging had a red banner bearingthe word "Classic" running along the bottom of the package'sface. The Doodle Pro product bears the label "Doodle Pro," alsoin stylized purple script, though not in the same font. None ofthe additional markings appear on the Doodle Pro package.

On May 5, 2004, PCA licensed its Magna Doodle trademark to TheOhio Art Company ("Ohio Art"). Though there is no Ohio Art MagnaDoodle currently on the market, Ohio Art plans to introduce one.The prototype packages for this product bear the same logo as thelast Fisher-Price Magna Doodle, including the words "TheOriginal" and the slogan, "The world's favorite way to doodle!"The Ohio Art package's other elements differ from Fisher-Price's.

D. Consumer Studies

Both parties commissioned surveys to gauge potential consumerconfusion between the Magna Doodle and Doodle Pro marks. PCAconducted one survey, Fisher Price, two.

1. PCA's Survey — The Ostberg Survey

PCA's expert, Dr. Henry D. Ostberg, conducted a survey todetermine the likelihood of confusion between the Magna Doodleand Doodle Pro logos. He surveyed 232 people who were potentialpurchasers of a toy for writing and drawing on an erasable board.These survey respondents were first shown a series of five toylogos, accompanied by a brief description of what kind of toy thelogo would mark. The five logos, with their toy descriptions,were: Logo Toy Description Hot Wheels authentic-looking toy cars Mega Bloks building blocks Fab Friends character doll with a flair for fashion Boggle Jr. spelling and reading game Magna Doodle erasable writing/drawing toy

The Magna Doodle logo shown to the respondents consisted of thepurple stylized writing on a yellow background. The logo appearedalone on a sheet of paper, not on a package, and without thewords "The Original" or the slogan "The world's favorite way todoodle!"

The respondents were then asked a series of "buffer" questions,after which they were shown another series of five logos anddescriptions. The series contained: Logo Toy Description Street Rockets authentic-looking toy cars Lego building blocks Fab Friends character doll with a flair for fashion Boggle Jr. spelling and reading game Doodle Pro erasable writing/drawing toy

The kinds of toys shown in this series were the same as in thefirst, i.e., they had the same descriptions. Two of the toys wereactually the same (Fab Friends and Boggle Jr.).

After showing a respondent the second series, the interviewerwould then point to the Doodle Pro logo and ask "Was this — withthe same brand name — included in the first portfolio you sawbefore?" Respondents who answered "no" were then asked "Do youthink that the company that puts out this product (i.e., DoodlePro) also puts out or makes any of the products which wereincluded in the first portfolio?" If respondents answered "yes,"they were asked to say which product and why. Finally,respondents were asked "Do you think that this product received —or needed to receive — permission or approval from anyone for itto be made or sold?" If respondents answered "yes," they were asked from whom waspermission needed and why they believed permission was needed.

Respondents were then asked the same set of questions but aboutthe "Street Rockets" toys. This question was meant to work as an"internal control" — a means of determining what percentage ofpeople may have been biased by the way that, or even just thatfact that, questions were asked.

After bias was accounted for,2 22% of respondentsbelieved Doodle Pro and Magna Doodle were the same brand. Anadditional 9% thought that Doodle Pro was either made by the samecompany or had received permission or approval from the samecompany that made Magna Doodle.

2. Fisher-Prices's First Survey — The Reitter Survey

Fisher-Price's first expert, Robert N. Reitter, conducted asurvey to determine the likelihood of confusion between theFisher-Price Doodle Pro product and the Ohio Art Magna DoodleProduct. Reitter selected 160 respondents who were likely to buya drawing toy for a child between the ages of two and six.

Each respondent was shown a prototype Ohio Art Magna Doodle andasked to examine it. After they finished, the toy was taken awayand the respondent was asked a series of buffer questions. Therespondent was then taken into a room containing nine products ondisplay. Eight of the products were always the same — drawingtoys made by competitors, namely: Aquadoodle

Color `n Drive

Crayola Trace `n Draw Explorer

Dora the Explorer Adventure Doodler

Lazer Doodle

Lite Brite

Etch a Sketch

Super Draw

For half the respondents, the display also included the DoodlePro product. For the other half, the display included a controlproduct. The control product was a product identical in allrespects to the Doodle Pro except its name was "Draw Pro" and itslogo consisted of that name written in red upright text.

After the respondents viewed the products, they were asked ifthey thought any of the products in the display was made by thesame company as the toy they saw earlier (i.e., the MagnaDoodle). If they answered "yes," they were asked to identifywhich toy was put out by the same company.

Respondents were then asked if they thought any of thecompanies manufacturing the toys in the display were affiliatedwith, or got approval from, the company that made the toy theysaw earlier. If they answered "yes," they were asked to identifywhich toy that company made.

In response to one of these questions, 31% of respondentsanswered "yes" and identified the Doodle Pro; 34% answered "yes"and identified the Draw Pro. Additionally, 29% of respondents inthe group that saw the Doodle Pro answered "yes" and identifiedthe Aquadoodle in response to one of the above questions, as did 30% of those inthe group that saw the Draw Pro.

3. Fisher-Price's Second Survey — The Mazis Survey

Fisher-Price's second expert, Dr. Michael B. Maziz, conducted asurvey to determine if consumers associated the Doodle Proproduct with the Magna Doodle name, and, if so, whether that wasdue to the Doodle Pro logo or something else. Respondents wereapproximately 400 people who were likely to purchase a drawingtoy for a child between the ages of two and six.

Respondents were shown an array of nine toys. The array was thesame as the array used in the previous study. Half therespondents saw eight toys plus the Doodle Pro. The other halfsaw the same eight toys plus the Draw Pro. Respondents were thenhanded either the Doodle Pro or Draw Pro, depending on whichgroup they were in, and asked the following questions: 1. Who do you think is the company that makes this toy? What makes you think so? 2. Do you or don't you think that the company that makes or puts out this toy also makes or puts out any other toy or toys on which a child can create pictures or designs, or have you no thoughts about this? 3. [If a respondent indicated the company did make other toys:] What toy or toys on which a child can create pictures or designs do you think are made or put out by the same company that makes or puts out this toy? Any others? Why do you think that the company that [makes the toy named] is made or put out by the same company? 4. Do you or don't you think that the company that makes or puts out this toy is somehow connected with or needed the approval of any other company or have you no thoughts about this? 5. [If a respondent indicated the company was connected or did need approval:] With what company or companies do you think it is connected with or needed the approval of? Any others? Why do you think that it is connected with or needed the approval of [the company named]?The interviewer then handed the respondent the Super Draw andDora the Explorer Adventure Doodler along with the Doodle Pro orDraw Pro, and asked: These three toys are sometimes referred to as magnetic drawing boards. Other than these three toys, please tell me the names of any other magnetic drawing boards you have heard about or seen before? Any others?

Almost all respondents answered that Fisher Price made eitherthe Doodle Pro or Draw Pro. In each group, 60% of the respondentsanswered that the company that made Doodle Pro or Draw Pro madeother products; 7.2% of those who saw the Doodle Pro identifiedMagna Doodle as the other product, as did 8.2% of the respondentswho saw Draw Pro. Thirteen percent of Doodle Pro respondents, and9.2% of Draw Pro respondents, indicated that the company thatmade the product they were shown (either Doodle Pro or Draw Pro)was connected with or needed approval of another company. TwoDoodle Pro respondents identified that company as the companythat made Magna Doodle, as did one Draw Pro respondent.

In response to the final question, 23.6% of respondents who sawthe Doodle Pro mentioned Magna Doodle as another drawing toy, asdid 29.5% of those who saw the Draw Pro.

II. Discussion

There are two disputed issues in this case. First, the partiesdispute the extent of PCA's trademark rights. PCA argues that itowns not only the name Magna Doodle and its logo but also all thetrade dress associated with the packaging and marketing of theMagna Doodle, even that created by Fisher-Price. Fisher-Pricedenies that PCA has any rights in the trade dress. Second, theparties dispute whether Fisher-Price's Doodle Pro productinfringes PCA's trademark rights.

A. Standard of Review

The Second Circuit has adopted a two-prong test for determiningwhen a preliminary injunction is appropriate. The burden is onthe party seeking the injunction to demonstrate (1) thelikelihood of irreparable injury in the absence of such aninjunction, and (2) either (a) likelihood of success on the merits or (b) sufficiently serious questions goingto the merits to make them fair ground for litigation plus abalance of hardships tipping decidedly toward the partyrequesting the preliminary relief. Reuters Ltd. v. United PressIntern., Inc., 903 F.2d 904, 907 (2d Cir. 1990).

In this case, there is no need to deal with the first prongbecause PCA has not established either likelihood of success onthe merits or a balance of hardships tipping decidedly in itsfavor.3

B. Ownership of "Trade Dress"

PCA appears to have two theories concerning trade dressownership.4 First, it argues that the Magna Doodleproduct has always had a "consistent overall look," and PCA'slicense to Fisher-Price was a license of not only a name and logobut also that look, and therefore Fisher-Price cannot continue touse designs based on that look. Second, PCA argues, even if thereis no "consistent overall look" to the Magna Doodle, the partiesnevertheless agreed, either explicitly or implicitly, that alltrade dress created by Fisher-Price for the Magna Doodle would beowned by PCA.

1. Pre-Fisher-Price Trade Dress

PCA argues that its license to Fisher-Price included not onlythe Magna Doodle name and logo but also various trade dresselements that Fisher-Price eventually used in its designs. PCAcontends that this trade dress consists of the "consistentoverall look" that the Magna Doodle has had since its 1978introduction. If, since its creation, the Magna Doodle had maintained acertain unique look and if PCA owned that look, it wouldcertainly make sense that its license to Fisher-Price would haveincluded the right to use that look and that Fisher-Price couldnot now continue to use that look in its future products. Theproblem is that the evidence presented to date does not supportthe existence of a "consistent overall look." The Magna Doodle'sdesign and package have changed with nearly every iteration ofthe product; the only things that have remained consistent arethe name, the logo, and certain functional elements.5Accordingly, on the present record, I cannot conclude that PCAowned trade dress rights in the overall look of the Magna Doodleat the time it licensed the Magna Doodle to PCA.

2. Trade Dress Created By Fisher-Price

PCA acknowledges that the contract between it and Fisher-Priceis silent about who owns the rights to packaging andpresentation, i.e., trade dress, created by Fisher-Price for theMagna Doodle products. PCA also admits that the designs for theMagna Doodle packaging were created by Fisher-Price atFisher-Price's expense. Nevertheless, PCA believes it now ownsthe rights to that trade dress. It has three arguments: (1) the1994 amendment to the Agreement explicitly assigned those rightsto PCA; (2) the parties' course of dealing — specifically, FisherPrice's seeking PCA approval for new designs — indicates PCA hasownership; and (3) it is standard industry practice for thelicensor of a trademark to become the owner of all trade dressdeveloped for use with the licensed mark. a. The Agreement

PCA argues that the language in the 1994 amendment to theAgreement redefining the term "mark" to include "any othertrademarks which may subsequently be used by [Fisher-Price] inconnection with the marketing and sale of goods in the MAGNADOODLE line," meant to assign ownership of trade dress rights toPCA. This interpretation is not tenable.

In the first place, it is not clear from the face of thecontract that the term "trademark" was meant to cover tradedress. PCA's evidence in support of that conclusion is theafter-the-fact testimony of PCA's representative. That evidencealone does not convince me that this was the likely meaningintended by the parties.

More fundamentally, PCA's argument begs the question. If theterm "trademark" in the amendment refers to trade dress, all thatwould mean is that the amendment granted Fisher-Price a licensefor any Magna Doodle trade dress actually owned byPCA.6 The question, however, is who owned what tradedress in the first place, and the amendment does not speak tothat issue.

b. Course of Dealing

PCA next argues that, even if the contract language provides noinsight into trade dress ownership, it is clear from the parties'course of dealing that they intended PCA to own the trade dress.Specifically, PCA argues that Fisher-Price submitted all packagedesigns to PCA for approval, and that, in the licensing industry,this is understood to be an indication of the licensor'sownership. Assuming the statements about the licensing industryare true, the evidence still does not show that Fisher-Pricesubmitted its designs to PCA for approval of the trade dressitself. Instead what the record indicates is that, in accordance with theterms of the Agreement, Fisher-Price would submit its potentialdesigns to PCA so that PCA could satisfy itself that its MagnaDoodle mark was appropriately displayed. There is simply nocredible evidence in the current record that shows PCA had anycreative input in or veto power over the design of Magna Doodlepackaging.

c. Industry Practice

PCA's final argument, made through its expert Carole Francesca,is that in the licensing industry trade dress is rarely mentionedin licenses, and it is always understood that rights in suchtrade dress will belong to the licensor. I am not persuaded byMs. Francesca's testimony. I do accept her statement that manylicensing contracts do not mention the word "trade dress," butnot her inference that this is because in all cases it isunderstood that the licensor will own all trade dress. Rather itappears to me, based on the testimony of Fisher-Price's witnessesand on the testimony given by Ms. Francesca undercross-examination, that there are primarily two reasons whylicensing contracts do not mention trade dress: (1) because thesituation is one where the licensee is required to conform hisuse of the licensed property to very specific guidelines, andcannot, therefore, independently develop any trade dress, makingthe trade dress question irrelevant; or (2) because the tradedress question is in fact addressed by the contract, but throughthe use of words other than "trade dress." Of course, it may bethat there are some contracts that, as Ms. Francesca suggested,do not mention the term trade dress, do not refer to it byanother name, and yet intend that trade dress created by thelicensee will be owned by the licensor. Still, even if some suchcontracts exist, I cannot conclude on that basis that thestandard practice in the industry is to silently allow all tradedress rights — no matter who creates the trade dress — to belong to the licensor.

3. Summary

In short, because there is insufficient evidence that PCA ownedtrade dress rights before it licensed the Magna Doodle toFisher-Price and because there is insufficient evidence that theparties intended for PCA to have ownership of trade dress rightscreated by Fisher Price, I conclude that PCA is not likely tosucceed at trial in demonstrating that its rights include tradedress rights.7

C. Likelihood of Confusion

Having concluded that PCA has not established trademark rightsin any part of the packaging or design of the Magna Doodle, otherthan the name and logo, the question is whether Fisher-Price isinfringing on that trademarked name and logo.

PCA appears to have two theories of infringement. First,consumers will believe any product bearing the Doodle Pro logo isassociated with Magna Doodle, regardless of whether the consumerknows the Magna Doodle's history. In other words, the merepresence of the logo causes confusion, not the peculiar historyof the toy's licensing.8 Second, when a new Magna Doodleproduct is released consumers will either assume Doodle Pro ismade by the same company as that new Magna Doodle, or assume thatthe new Magna Doodle is made by the company making Doodle Pro,i.e., "reverse confusion." PCA believes that the Ostberg Survey establishes both types ofconfusion. According to PCA, that study establishes thatconsumers cannot help but associate the Doodle Pro logo with theMagna Doodle logo. Therefore, PCA concludes, consumers willimagine both that the Doodle Pro is associated with the MagnaDoodle mark generally and that it is associated with any specificMagna Doodle product that may be released.

I agree with Fisher-Price that there are at least threesignificant problems with the Ostberg Survey. First, consumerswere never shown any products. Instead, the survey was designedto determine whether the two logos were, in the abstract,confusingly similar. That two logos may be confusing when viewedin isolation, does not show that their use on two separateproducts is also confusing. Second, the survey did not use theentire trademarked logo for the Magna Doodle. Dr. Ostberg leftout two potentially distinguishing markers — the words "TheOriginal" and the Magna Doodle slogan — even though those itemshave consistently been present on the actual Magna Doodleproducts. Third, the survey's "internal control" seemsinadequate. It does not account for the possibility thatrespondents could have relied on non-protected similarities suchas similar colors. Both the Doodle Pro and Magna Doodle logosshown to respondents consisted of purple writing on a yellowbackground. No other logos used in the survey contained thiscolor scheme, and no two other corresponding logos had the samecolor scheme as each other (unless it was simply the same logoshown twice).

In sum, the most I am able to glean from the Ostberg Survey isthat consumers are more likely to confuse the name "Doodle Pro"written in purple on a yellow background with the name "MagnaDoodle" similarly written than they are to confuse the name"Doodle Pro" so written with the names of other toys — or thanthey are to confuse the name "Street Rockets," written in yellow, black, and white on a blue background, with the name "HotWheels" written in yellow and white on a red background. TheOstberg Survey, however, does not lead me to believe thatconsumers are any more likely to confuse a Doodle Pro productwith either the Magna Doodle name or a Magna Doodle product, thanthey are to confuse the Doodle Pro with any other drawing toy, orany other drawing toy with Magna Doodle.

Fisher-Price argues both that the Ostberg Survey is flawed andthat Fisher-Price's surveys rebut PCA's conclusions. The MazisSurvey, according to Fisher-Price, establishes that consumers areno more likely to recall the Magna Doodle after seeing the DoodlePro than they are after seeing the Draw Pro, indicating that, ifthere is any association, it is not caused by the Doodle Pro nameor logo. Similarly, Fisher-Price contends that the Reitter Surveyestablishes that consumers were no more likely to associate theOhio Art Magna Doodle product with the Doodle Pro than with theDraw Pro, eliminating the possibility that any association wasthe result of the Doodle Pro logo. Fisher-Price does not claimthat either study establishes that consumers will not associatethe Doodle Pro with either the Magna Doodle mark or a MagnaDoodle product. Fisher-Price argues only that such association isnot the result of any impermissible marking, but is instead theresult of something else — such as the similarity between thefunctionality of the products, their packaging, their design, orsome other unprotected element.

I find the methodology of Fisher-Price's surveys more suitedthan PCA's to the question at hand. Both Fisher-Price surveysused a control drawing product — as opposed to a controlconsisting of some other toy. That control product was welldesigned to determine whether the difference between the controlproduct and the tested product, viz., the logo, is the cause ofany confusion. Both studies determined it is not. I do not meanto suggest there are no problems with these studies. As PCA points out, the Reitter Surveysuffered from a small sample size,9 and the questions inthe Mazis Survey were somewhat confusing.10 Nevertheless,on the whole, as compared with the Ostberg Survey, I find themethodology of the Fisher-Price surveys more sound.

Having considered all this evidence,11 I conclude thatPCA has not demonstrated that it is likely to succeed in provinglikelihood of confusion at trial. Though there are problems withboth sides' expert reports, on the whole, I find Fisher-Price'ssurveys more persuasive. Moreover, the burden of proof is on PCA,and, even without the counter evidence of Fisher-Price's surveys,I do not think the Ostberg Study establishes likelihood ofconfusion.

D. Balance of Harms

Because I analyzed PCA's evidence to determine "likelihood ofsuccess," I must consider the possibility that, even if thatstandard is not met, PCA may still have demonstrated sufficientlyserious questions on the merits plus a balance of hardshipstipping decidedly in its favor. Putting aside the question whether PCA has presented enough evidence todemonstrate "sufficiently serious questions" despite not showing"likelihood of success," I find that it has not shown a balanceof hardships tipping decidedly in its favor.

I do not doubt that, if PCA is ultimately successful, it willhave suffered harm. Fisher-Price is certainly a significantcompetitor, and I am sure PCA can ill afford to lose any chanceat a competitive edge. Nevertheless, an injunction againstFisher-Price, particularly just before the holiday shoppingseason, could be devastating to the success of its new Doodle Proproduct. Accordingly, on balance, I cannot say that the balanceof hardships tips one way or the other; I certainly cannot saythat it tips decidedly in PCA's favor.

The plaintiff's motion for preliminary injunction (doc. # 4) isDENIED.

It is so ordered.

1. Fisher-Price is seeking, but has not yet received, federalregistration of the "Doodle Pro" mark.

2. Bias was accounted for by subtracting the percentage ofaffirmative answers to the "Street Rockets" questions from thepercentage of affirmative answers to the Magna Doodle questions.

3. Fisher-Price argued that a higher burden should apply inthis case because it believes the injunction PCA is seekingqualifies as a mandatory injunction. PCA has not met even thelower burden, so there is no need to reach the question.

4. Trade dress rights may be enforced under section 43(a) ofthe Lanham Act. 15 U.S.C. § 1125(a).

5. Functional elements do not receive trade dress protection.Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23,29 (2001).

6. Moreover, as discussed above, PCA has not established thatit owned any pre-Fisher-Price trade dress. This further weakensPCA's argument that the term "trademark" was intended to covertrade dress.

7. Even if PCA did establish its ownership to trade dresselements, it would be required to show that such elements hadacquired secondary meaning in order to receive federalprotection. See Traffix, 532 U.S. at 28. There is littleevidence on this point.

8. Presumably PCA does not think that customers are beingmisled, if they believe there is an association betweenFisher-Price and Magna Doodle solely because Fisher-Price used tomake Magna Doodle.

9. Fisher-Price argues persuasively that small sample sizeonly makes the results less precise, not wholly inaccurate, andthat, because the results in this case showed 0% confusion,even if that result is somewhat imprecise, it is still strongevidence of lack of confusion.

10. I do not, however, agree with all of PCA's criticisms ofFisher-Price's surveys. For example, I do not find convincingPCA's argument that the Reitter Survey was incomplete because itfailed to ask consumers whether they thought the Magna Doodle andDoodle Pro products were the same, instead of just similar.Neither am I concerned because Fisher-Price's surveys did notinclude, or did not evaluate the answers to, "why" questions.

11. There was a minimal amount of evidence presented on otherPolaroid factors, including evidence concerning a few incidentsof possible actual confusion and evidence concerning the strengthof the Magna Doodle mark. Because the expert testimony onlikelihood of confusion was by far the most significant evidence,I will not go through every item of the additional evidence. Imerely note that I have considered all that evidence as well, andit does not alter my conclusion.

RULING ON MOTION FOR PRELIMINARY INJUNCTION

The Pilot Corporation of America ("PCA") seeks to enjoinFisher-Price, Inc. and Mattel, Inc. (collectively "Fisher-Price")from selling a product that PCA believes infringes its federallyregistered trademark and its common-law "trade dress" rights.Because PCA has not shown it is likely to succeed on the meritsof its claim, its motion is denied.

I. Facts

The following facts are either undisputed or likely to beestablished by PCA at trial.

A. The Magna Doodle

Until recently, Fisher-Price sold a children's drawing toynamed "the Magna Doodle." The Magna Doodle consists primarily ofa drawing screen made up of a lattice of small hexagons, eachhexagon containing iron filings in suspension. The fluid in whichthe filings are suspended is opaque, and is viscous enough tohold the filings in place against gravitational force, but notviscous enough to hold them in place against magnetic force. Whenthe Magna Doodle's "stylus" — a plastic rod tipped with a magnet— is drawn across the reticulated screen, the nearby filings arepulled to the top of the opaque suspension and become visible onthe screen. The screen's lattice structure ensures an evendistribution of filings. The Magna Doodle also has an "eraserbar," which sweeps a magnetic rod across the back of the screen,bringing all filings to the bottom of the suspended fluid, effectively "cleaning" the board.

B. The Agreement

PCA owns U.S. Patent No. 4,143,472 ("the '472 patent"),entitled "Displaying Magnetic Panel and its Display Device,"which covers the drawing screen used in the Magna Doodle. PCAalso owns the federally registered trademark "Magna Doodle."

Since 1978, Magna Doodle products have been available on themarket, though the mark was not always owned by PCA, and theproduct itself has not always been manufactured by Fisher-Price.Details of those earlier licensing arrangements are not relevant.

On January 1, 1992, PCA entered into a licensing agreement("the Agreement") with Tyco, giving Tyco the exclusive right touse the Magna Doodle trademark in connection with the manufactureand sale of drawing toys covered by the '472 patent. In return,Tyco agreed to purchase from PCA 100% of its annual requirementof panels for incorporation into its drawing toys bearing theMagna Doodle mark. The Agreement required the parties to agree byOctober 15 of each year on the number and price of panels to besupplied. Failure to do so would result in the Agreementterminating at the end of the calendar year. If the Agreementterminated, Tyco was permitted to continue to sell its existinginventory of licensed products for 180 days after the terminationdate.

The Agreement also provided that Tyco could use the MagnaDoodle mark only in a manner approved by PCA.

In 1994 the parties amended the Agreement. The pertinent partsof the amendment stated: WHEREAS, PCA and Tyco wish to amend the definition of the licensed "mark" to include those trademarks used by Tyco in connection with line extensions for the "MAGNA DOODLE" product on behalf of PCA. . . . "Mark" will mean the trademarks "MAGNA DOODLE", "MAGGIE DOODLE", "MAGNA DOODLE DAN", "THE ART OF IMAGINATION" or any other trademarks which may subsequently be used by Tyco in connection with the marketing and sale of goods in the "MAGNA DOODLE" line pursuant to license from PCA. . . . C. Introduction of the Doodle Pro

In 1997, Mattel merged with Tyco, and Mattel's subsidiary,Fisher-Price, assumed the rights and obligations of the 1992Agreement as amended. Soon after the merger, Fisher-Pricecomplained to PCA about the price of the panels used in the MagnaDoodle. As a result, in 2000 and 2002, PCA lowered the price onthe panels it sold to Fisher-Price. These price reductions didnot satisfy Fisher-Price, and, in 2003 Fisher-Price informed PCAthat if it did not lower its prices again, Fisher-Price wouldterminate the Agreement. PCA did not lower its prices, andFisher-Price did not place an order for panels before October 15,2003. Accordingly, the Agreement terminated on December 31, 2003.

Under the terms of the Agreement, Fisher-Price was allowed tosell off its existing supply of Magna Doodles until 180 daysafter January 1, 2004, which it did. At the same time, however,Fisher-Price began to develop and market a replacement product,using panels purchased from a third-party vendor. The new productis named the "Doodle Pro."1 The new product and all itspackaging is nearly identical to the last version of the MagnaDoodle sold by Fisher-Price. The only significant differencesbetween the two products are their logos. The Magna Doodleproduct bore the label "Magna Doodle" in stylized purple script.The words "The Original" appeared in a red oval above the name,and the slogan "The world's favorite way to doodle!" appearedbelow. Additionally, the Magna Doodle packaging had a red banner bearingthe word "Classic" running along the bottom of the package'sface. The Doodle Pro product bears the label "Doodle Pro," alsoin stylized purple script, though not in the same font. None ofthe additional markings appear on the Doodle Pro package.

On May 5, 2004, PCA licensed its Magna Doodle trademark to TheOhio Art Company ("Ohio Art"). Though there is no Ohio Art MagnaDoodle currently on the market, Ohio Art plans to introduce one.The prototype packages for this product bear the same logo as thelast Fisher-Price Magna Doodle, including the words "TheOriginal" and the slogan, "The world's favorite way to doodle!"The Ohio Art package's other elements differ from Fisher-Price's.

D. Consumer Studies

Both parties commissioned surveys to gauge potential consumerconfusion between the Magna Doodle and Doodle Pro marks. PCAconducted one survey, Fisher Price, two.

1. PCA's Survey — The Ostberg Survey

PCA's expert, Dr. Henry D. Ostberg, conducted a survey todetermine the likelihood of confusion between the Magna Doodleand Doodle Pro logos. He surveyed 232 people who were potentialpurchasers of a toy for writing and drawing on an erasable board.These survey respondents were first shown a series of five toylogos, accompanied by a brief description of what kind of toy thelogo would mark. The five logos, with their toy descriptions,were: Logo Toy Description Hot Wheels authentic-looking toy cars Mega Bloks building blocks Fab Friends character doll with a flair for fashion Boggle Jr. spelling and reading game Magna Doodle erasable writing/drawing toy

The Magna Doodle logo shown to the respondents consisted of thepurple stylized writing on a yellow background. The logo appearedalone on a sheet of paper, not on a package, and without thewords "The Original" or the slogan "The world's favorite way todoodle!"

The respondents were then asked a series of "buffer" questions,after which they were shown another series of five logos anddescriptions. The series contained: Logo Toy Description Street Rockets authentic-looking toy cars Lego building blocks Fab Friends character doll with a flair for fashion Boggle Jr. spelling and reading game Doodle Pro erasable writing/drawing toy

The kinds of toys shown in this series were the same as in thefirst, i.e., they had the same descriptions. Two of the toys wereactually the same (Fab Friends and Boggle Jr.).

After showing a respondent the second series, the interviewerwould then point to the Doodle Pro logo and ask "Was this — withthe same brand name — included in the first portfolio you sawbefore?" Respondents who answered "no" were then asked "Do youthink that the company that puts out this product (i.e., DoodlePro) also puts out or makes any of the products which wereincluded in the first portfolio?" If respondents answered "yes,"they were asked to say which product and why. Finally,respondents were asked "Do you think that this product received —or needed to receive — permission or approval from anyone for itto be made or sold?" If respondents answered "yes," they were asked from whom waspermission needed and why they believed permission was needed.

Respondents were then asked the same set of questions but aboutthe "Street Rockets" toys. This question was meant to work as an"internal control" — a means of determining what percentage ofpeople may have been biased by the way that, or even just thatfact that, questions were asked.

After bias was accounted for,2 22% of respondentsbelieved Doodle Pro and Magna Doodle were the same brand. Anadditional 9% thought that Doodle Pro was either made by the samecompany or had received permission or approval from the samecompany that made Magna Doodle.

2. Fisher-Prices's First Survey — The Reitter Survey

Fisher-Price's first expert, Robert N. Reitter, conducted asurvey to determine the likelihood of confusion between theFisher-Price Doodle Pro product and the Ohio Art Magna DoodleProduct. Reitter selected 160 respondents who were likely to buya drawing toy for a child between the ages of two and six.

Each respondent was shown a prototype Ohio Art Magna Doodle andasked to examine it. After they finished, the toy was taken awayand the respondent was asked a series of buffer questions. Therespondent was then taken into a room containing nine products ondisplay. Eight of the products were always the same — drawingtoys made by competitors, namely: Aquadoodle

Color `n Drive

Crayola Trace `n Draw Explorer

Dora the Explorer Adventure Doodler

Lazer Doodle

Lite Brite

Etch a Sketch

Super Draw

For half the respondents, the display also included the DoodlePro product. For the other half, the display included a controlproduct. The control product was a product identical in allrespects to the Doodle Pro except its name was "Draw Pro" and itslogo consisted of that name written in red upright text.

After the respondents viewed the products, they were asked ifthey thought any of the products in the display was made by thesame company as the toy they saw earlier (i.e., the MagnaDoodle). If they answered "yes," they were asked to identifywhich toy was put out by the same company.

Respondents were then asked if they thought any of thecompanies manufacturing the toys in the display were affiliatedwith, or got approval from, the company that made the toy theysaw earlier. If they answered "yes," they were asked to identifywhich toy that company made.

In response to one of these questions, 31% of respondentsanswered "yes" and identified the Doodle Pro; 34% answered "yes"and identified the Draw Pro. Additionally, 29% of respondents inthe group that saw the Doodle Pro answered "yes" and identifiedthe Aquadoodle in response to one of the above questions, as did 30% of those inthe group that saw the Draw Pro.

3. Fisher-Price's Second Survey — The Mazis Survey

Fisher-Price's second expert, Dr. Michael B. Maziz, conducted asurvey to determine if consumers associated the Doodle Proproduct with the Magna Doodle name, and, if so, whether that wasdue to the Doodle Pro logo or something else. Respondents wereapproximately 400 people who were likely to purchase a drawingtoy for a child between the ages of two and six.

Respondents were shown an array of nine toys. The array was thesame as the array used in the previous study. Half therespondents saw eight toys plus the Doodle Pro. The other halfsaw the same eight toys plus the Draw Pro. Respondents were thenhanded either the Doodle Pro or Draw Pro, depending on whichgroup they were in, and asked the following questions: 1. Who do you think is the company that makes this toy? What makes you think so? 2. Do you or don't you think that the company that makes or puts out this toy also makes or puts out any other toy or toys on which a child can create pictures or designs, or have you no thoughts about this? 3. [If a respondent indicated the company did make other toys:] What toy or toys on which a child can create pictures or designs do you think are made or put out by the same company that makes or puts out this toy? Any others? Why do you think that the company that [makes the toy named] is made or put out by the same company? 4. Do you or don't you think that the company that makes or puts out this toy is somehow connected with or needed the approval of any other company or have you no thoughts about this? 5. [If a respondent indicated the company was connected or did need approval:] With what company or companies do you think it is connected with or needed the approval of? Any others? Why do you think that it is connected with or needed the approval of [the company named]?The interviewer then handed the respondent the Super Draw andDora the Explorer Adventure Doodler along with the Doodle Pro orDraw Pro, and asked: These three toys are sometimes referred to as magnetic drawing boards. Other than these three toys, please tell me the names of any other magnetic drawing boards you have heard about or seen before? Any others?

Almost all respondents answered that Fisher Price made eitherthe Doodle Pro or Draw Pro. In each group, 60% of the respondentsanswered that the company that made Doodle Pro or Draw Pro madeother products; 7.2% of those who saw the Doodle Pro identifiedMagna Doodle as the other product, as did 8.2% of the respondentswho saw Draw Pro. Thirteen percent of Doodle Pro respondents, and9.2% of Draw Pro respondents, indicated that the company thatmade the product they were shown (either Doodle Pro or Draw Pro)was connected with or needed approval of another company. TwoDoodle Pro respondents identified that company as the companythat made Magna Doodle, as did one Draw Pro respondent.

In response to the final question, 23.6% of respondents who sawthe Doodle Pro mentioned Magna Doodle as another drawing toy, asdid 29.5% of those who saw the Draw Pro.

II. Discussion

There are two disputed issues in this case. First, the partiesdispute the extent of PCA's trademark rights. PCA argues that itowns not only the name Magna Doodle and its logo but also all thetrade dress associated with the packaging and marketing of theMagna Doodle, even that created by Fisher-Price. Fisher-Pricedenies that PCA has any rights in the trade dress. Second, theparties dispute whether Fisher-Price's Doodle Pro productinfringes PCA's trademark rights.

A. Standard of Review

The Second Circuit has adopted a two-prong test for determiningwhen a preliminary injunction is appropriate. The burden is onthe party seeking the injunction to demonstrate (1) thelikelihood of irreparable injury in the absence of such aninjunction, and (2) either (a) likelihood of success on the merits or (b) sufficiently serious questions goingto the merits to make them fair ground for litigation plus abalance of hardships tipping decidedly toward the partyrequesting the preliminary relief. Reuters Ltd. v. United PressIntern., Inc., 903 F.2d 904, 907 (2d Cir. 1990).

In this case, there is no need to deal with the first prongbecause PCA has not established either likelihood of success onthe merits or a balance of hardships tipping decidedly in itsfavor.3

B. Ownership of "Trade Dress"

PCA appears to have two theories concerning trade dressownership.4 First, it argues that the Magna Doodleproduct has always had a "consistent overall look," and PCA'slicense to Fisher-Price was a license of not only a name and logobut also that look, and therefore Fisher-Price cannot continue touse designs based on that look. Second, PCA argues, even if thereis no "consistent overall look" to the Magna Doodle, the partiesnevertheless agreed, either explicitly or implicitly, that alltrade dress created by Fisher-Price for the Magna Doodle would beowned by PCA.

1. Pre-Fisher-Price Trade Dress

PCA argues that its license to Fisher-Price included not onlythe Magna Doodle name and logo but also various trade dresselements that Fisher-Price eventually used in its designs. PCAcontends that this trade dress consists of the "consistentoverall look" that the Magna Doodle has had since its 1978introduction. If, since its creation, the Magna Doodle had maintained acertain unique look and if PCA owned that look, it wouldcertainly make sense that its license to Fisher-Price would haveincluded the right to use that look and that Fisher-Price couldnot now continue to use that look in its future products. Theproblem is that the evidence presented to date does not supportthe existence of a "consistent overall look." The Magna Doodle'sdesign and package have changed with nearly every iteration ofthe product; the only things that have remained consistent arethe name, the logo, and certain functional elements.5Accordingly, on the present record, I cannot conclude that PCAowned trade dress rights in the overall look of the Magna Doodleat the time it licensed the Magna Doodle to PCA.

2. Trade Dress Created By Fisher-Price

PCA acknowledges that the contract between it and Fisher-Priceis silent about who owns the rights to packaging andpresentation, i.e., trade dress, created by Fisher-Price for theMagna Doodle products. PCA also admits that the designs for theMagna Doodle packaging were created by Fisher-Price atFisher-Price's expense. Nevertheless, PCA believes it now ownsthe rights to that trade dress. It has three arguments: (1) the1994 amendment to the Agreement explicitly assigned those rightsto PCA; (2) the parties' course of dealing — specifically, FisherPrice's seeking PCA approval for new designs — indicates PCA hasownership; and (3) it is standard industry practice for thelicensor of a trademark to become the owner of all trade dressdeveloped for use with the licensed mark. a. The Agreement

PCA argues that the language in the 1994 amendment to theAgreement redefining the term "mark" to include "any othertrademarks which may subsequently be used by [Fisher-Price] inconnection with the marketing and sale of goods in the MAGNADOODLE line," meant to assign ownership of trade dress rights toPCA. This interpretation is not tenable.

In the first place, it is not clear from the face of thecontract that the term "trademark" was meant to cover tradedress. PCA's evidence in support of that conclusion is theafter-the-fact testimony of PCA's representative. That evidencealone does not convince me that this was the likely meaningintended by the parties.

More fundamentally, PCA's argument begs the question. If theterm "trademark" in the amendment refers to trade dress, all thatwould mean is that the amendment granted Fisher-Price a licensefor any Magna Doodle trade dress actually owned byPCA.6 The question, however, is who owned what tradedress in the first place, and the amendment does not speak tothat issue.

b. Course of Dealing

PCA next argues that, even if the contract language provides noinsight into trade dress ownership, it is clear from the parties'course of dealing that they intended PCA to own the trade dress.Specifically, PCA argues that Fisher-Price submitted all packagedesigns to PCA for approval, and that, in the licensing industry,this is understood to be an indication of the licensor'sownership. Assuming the statements about the licensing industryare true, the evidence still does not show that Fisher-Pricesubmitted its designs to PCA for approval of the trade dressitself. Instead what the record indicates is that, in accordance with theterms of the Agreement, Fisher-Price would submit its potentialdesigns to PCA so that PCA could satisfy itself that its MagnaDoodle mark was appropriately displayed. There is simply nocredible evidence in the current record that shows PCA had anycreative input in or veto power over the design of Magna Doodlepackaging.

c. Industry Practice

PCA's final argument, made through its expert Carole Francesca,is that in the licensing industry trade dress is rarely mentionedin licenses, and it is always understood that rights in suchtrade dress will belong to the licensor. I am not persuaded byMs. Francesca's testimony. I do accept her statement that manylicensing contracts do not mention the word "trade dress," butnot her inference that this is because in all cases it isunderstood that the licensor will own all trade dress. Rather itappears to me, based on the testimony of Fisher-Price's witnessesand on the testimony given by Ms. Francesca undercross-examination, that there are primarily two reasons whylicensing contracts do not mention trade dress: (1) because thesituation is one where the licensee is required to conform hisuse of the licensed property to very specific guidelines, andcannot, therefore, independently develop any trade dress, makingthe trade dress question irrelevant; or (2) because the tradedress question is in fact addressed by the contract, but throughthe use of words other than "trade dress." Of course, it may bethat there are some contracts that, as Ms. Francesca suggested,do not mention the term trade dress, do not refer to it byanother name, and yet intend that trade dress created by thelicensee will be owned by the licensor. Still, even if some suchcontracts exist, I cannot conclude on that basis that thestandard practice in the industry is to silently allow all tradedress rights — no matter who creates the trade dress — to belong to the licensor.

3. Summary

In short, because there is insufficient evidence that PCA ownedtrade dress rights before it licensed the Magna Doodle toFisher-Price and because there is insufficient evidence that theparties intended for PCA to have ownership of trade dress rightscreated by Fisher Price, I conclude that PCA is not likely tosucceed at trial in demonstrating that its rights include tradedress rights.7

C. Likelihood of Confusion

Having concluded that PCA has not established trademark rightsin any part of the packaging or design of the Magna Doodle, otherthan the name and logo, the question is whether Fisher-Price isinfringing on that trademarked name and logo.

PCA appears to have two theories of infringement. First,consumers will believe any product bearing the Doodle Pro logo isassociated with Magna Doodle, regardless of whether the consumerknows the Magna Doodle's history. In other words, the merepresence of the logo causes confusion, not the peculiar historyof the toy's licensing.8 Second, when a new Magna Doodleproduct is released consumers will either assume Doodle Pro ismade by the same company as that new Magna Doodle, or assume thatthe new Magna Doodle is made by the company making Doodle Pro,i.e., "reverse confusion." PCA believes that the Ostberg Survey establishes both types ofconfusion. According to PCA, that study establishes thatconsumers cannot help but associate the Doodle Pro logo with theMagna Doodle logo. Therefore, PCA concludes, consumers willimagine both that the Doodle Pro is associated with the MagnaDoodle mark generally and that it is associated with any specificMagna Doodle product that may be released.

I agree with Fisher-Price that there are at least threesignificant problems with the Ostberg Survey. First, consumerswere never shown any products. Instead, the survey was designedto determine whether the two logos were, in the abstract,confusingly similar. That two logos may be confusing when viewedin isolation, does not show that their use on two separateproducts is also confusing. Second, the survey did not use theentire trademarked logo for the Magna Doodle. Dr. Ostberg leftout two potentially distinguishing markers — the words "TheOriginal" and the Magna Doodle slogan — even though those itemshave consistently been present on the actual Magna Doodleproducts. Third, the survey's "internal control" seemsinadequate. It does not account for the possibility thatrespondents could have relied on non-protected similarities suchas similar colors. Both the Doodle Pro and Magna Doodle logosshown to respondents consisted of purple writing on a yellowbackground. No other logos used in the survey contained thiscolor scheme, and no two other corresponding logos had the samecolor scheme as each other (unless it was simply the same logoshown twice).

In sum, the most I am able to glean from the Ostberg Survey isthat consumers are more likely to confuse the name "Doodle Pro"written in purple on a yellow background with the name "MagnaDoodle" similarly written than they are to confuse the name"Doodle Pro" so written with the names of other toys — or thanthey are to confuse the name "Street Rockets," written in yellow, black, and white on a blue background, with the name "HotWheels" written in yellow and white on a red background. TheOstberg Survey, however, does not lead me to believe thatconsumers are any more likely to confuse a Doodle Pro productwith either the Magna Doodle name or a Magna Doodle product, thanthey are to confuse the Doodle Pro with any other drawing toy, orany other drawing toy with Magna Doodle.

Fisher-Price argues both that the Ostberg Survey is flawed andthat Fisher-Price's surveys rebut PCA's conclusions. The MazisSurvey, according to Fisher-Price, establishes that consumers areno more likely to recall the Magna Doodle after seeing the DoodlePro than they are after seeing the Draw Pro, indicating that, ifthere is any association, it is not caused by the Doodle Pro nameor logo. Similarly, Fisher-Price contends that the Reitter Surveyestablishes that consumers were no more likely to associate theOhio Art Magna Doodle product with the Doodle Pro than with theDraw Pro, eliminating the possibility that any association wasthe result of the Doodle Pro logo. Fisher-Price does not claimthat either study establishes that consumers will not associatethe Doodle Pro with either the Magna Doodle mark or a MagnaDoodle product. Fisher-Price argues only that such association isnot the result of any impermissible marking, but is instead theresult of something else — such as the similarity between thefunctionality of the products, their packaging, their design, orsome other unprotected element.

I find the methodology of Fisher-Price's surveys more suitedthan PCA's to the question at hand. Both Fisher-Price surveysused a control drawing product — as opposed to a controlconsisting of some other toy. That control product was welldesigned to determine whether the difference between the controlproduct and the tested product, viz., the logo, is the cause ofany confusion. Both studies determined it is not. I do not meanto suggest there are no problems with these studies. As PCA points out, the Reitter Surveysuffered from a small sample size,9 and the questions inthe Mazis Survey were somewhat confusing.10 Nevertheless,on the whole, as compared with the Ostberg Survey, I find themethodology of the Fisher-Price surveys more sound.

Having considered all this evidence,11 I conclude thatPCA has not demonstrated that it is likely to succeed in provinglikelihood of confusion at trial. Though there are problems withboth sides' expert reports, on the whole, I find Fisher-Price'ssurveys more persuasive. Moreover, the burden of proof is on PCA,and, even without the counter evidence of Fisher-Price's surveys,I do not think the Ostberg Study establishes likelihood ofconfusion.

D. Balance of Harms

Because I analyzed PCA's evidence to determine "likelihood ofsuccess," I must consider the possibility that, even if thatstandard is not met, PCA may still have demonstrated sufficientlyserious questions on the merits plus a balance of hardshipstipping decidedly in its favor. Putting aside the question whether PCA has presented enough evidence todemonstrate "sufficiently serious questions" despite not showing"likelihood of success," I find that it has not shown a balanceof hardships tipping decidedly in its favor.

I do not doubt that, if PCA is ultimately successful, it willhave suffered harm. Fisher-Price is certainly a significantcompetitor, and I am sure PCA can ill afford to lose any chanceat a competitive edge. Nevertheless, an injunction againstFisher-Price, particularly just before the holiday shoppingseason, could be devastating to the success of its new Doodle Proproduct. Accordingly, on balance, I cannot say that the balanceof hardships tips one way or the other; I certainly cannot saythat it tips decidedly in PCA's favor.

The plaintiff's motion for preliminary injunction (doc. # 4) isDENIED.

It is so ordered.

1. Fisher-Price is seeking, but has not yet received, federalregistration of the "Doodle Pro" mark.

2. Bias was accounted for by subtracting the percentage ofaffirmative answers to the "Street Rockets" questions from thepercentage of affirmative answers to the Magna Doodle questions.

3. Fisher-Price argued that a higher burden should apply inthis case because it believes the injunction PCA is seekingqualifies as a mandatory injunction. PCA has not met even thelower burden, so there is no need to reach the question.

4. Trade dress rights may be enforced under section 43(a) ofthe Lanham Act. 15 U.S.C. § 1125(a).

5. Functional elements do not receive trade dress protection.Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23,29 (2001).

6. Moreover, as discussed above, PCA has not established thatit owned any pre-Fisher-Price trade dress. This further weakensPCA's argument that the term "trademark" was intended to covertrade dress.

7. Even if PCA did establish its ownership to trade dresselements, it would be required to show that such elements hadacquired secondary meaning in order to receive federalprotection. See Traffix, 532 U.S. at 28. There is littleevidence on this point.

8. Presumably PCA does not think that customers are beingmisled, if they believe there is an association betweenFisher-Price and Magna Doodle solely because Fisher-Price used tomake Magna Doodle.

9. Fisher-Price argues persuasively that small sample sizeonly makes the results less precise, not wholly inaccurate, andthat, because the results in this case showed 0% confusion,even if that result is somewhat imprecise, it is still strongevidence of lack of confusion.

10. I do not, however, agree with all of PCA's criticisms ofFisher-Price's surveys. For example, I do not find convincingPCA's argument that the Reitter Survey was incomplete because itfailed to ask consumers whether they thought the Magna Doodle andDoodle Pro products were the same, instead of just similar.Neither am I concerned because Fisher-Price's surveys did notinclude, or did not evaluate the answers to, "why" questions.

11. There was a minimal amount of evidence presented on otherPolaroid factors, including evidence concerning a few incidentsof possible actual confusion and evidence concerning the strengthof the Magna Doodle mark. Because the expert testimony onlikelihood of confusion was by far the most significant evidence,I will not go through every item of the additional evidence. Imerely note that I have considered all that evidence as well, andit does not alter my conclusion.

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