March 2010 Issue

Civil Cases

Wolf Appliance, Inc. v. Viking Range Corp.,
2010 WL 546782 (W.D. Wis. Feb. 11, 2010)

ABSTRACT
A preliminary injunction was granted against Viking for its use of Wolf’s red knobs on ranges.  The Western District of Wisconsin found that Wolf had established both secondary meaning and a likelihood of confusion warranting the imposition of a preliminary injunction against its competitor in the residential range market.  Secondary meaning in Wolf’s trade dress was found based on the presumption accorded its federal registration and other evidence of strong sales, advertising, and market presence.  The court found likelihood of confusion by focusing on the fact that red knobs were uncommon in the field, meaning the parties’ products would be viewed as similar, and also found that a reasonable jury could infer an intent to pass off based on this fact.

CASE SUMMARY

FACTS
Plaintiff Wolf Appliance, Inc. (“Wolf”) owns a U.S. trademark registration for “red knob or knobs” for domestic gas and electric cooking appliances, namely, ranges, dual-fuel ranges, cooktops, and barbeque grills.  Wolf filed an action alleging federal trademark infringement and unfair competition against Defendant Viking Range Corporation (“Viking”), Wolf’s competitor in the manufacture of high-end cooking appliances, including ranges and rangetops.  Wolf claimed that Viking had infringed its trademark by offering high-end residential ranges with red knobs.  After Viking filed its answer, Wolf filed a motion for a preliminary injunction against Viking seeking to enjoin Viking from advertising, promoting, offering, or selling red knobs during the pendency of the case.

ANALYSIS
To prevail on its motion for a preliminary injunction, Wolf must demonstrate (1) some likelihood of success on the merits of its trademark-infringement claim; (2) that there is no adequate remedy at law and it will suffer irreparable harm if the injunction is denied; (3) the harm Wolf would suffer if denied an injunction would outweigh the harm Viking would suffer if the injunction issues; and (4) that the public interest would not be affected negatively by an issuance of an injunction.

The district court found that Wolf had shown a reasonable likelihood of success on the merits because Wolf’s trade dress had acquired secondary meaning and consumers would likely be confused as to the source or affiliation of Viking’s products.  The court focused on whether Wolf’s trade dress had acquired secondary meaning, evaluating this question under the Seventh Circuit’s six-factor test.

First, the court evaluated direct consumer testimony and consumer surveys, finding that the minimal amount of this type of evidence presented by both parties did not disturb Wolf’s presumption of validity and secondary meaning garnered through its registered trade dress.  Second, the length and exclusivity of Wolf’s use of its trade dress suggested that Wolf’s red knobs had acquired secondary meaning.  Specifically, the court noted that, despite the sporadic presence of other range and rangetop manufacturers using red knobs, Wolf had used the red knobs nearly exclusively and in a source-identifying fashion.  The third secondary-meaning factor—amount and manner of advertising—also weighed in favor of a finding of secondary meaning.  Wolf had spent approximately $41 million in advertising and promoting its products bearing red knobs, and had referred to the knobs as Wolf’s distinctive or exclusive feature.  Wolf’s high volume of sales, more than 325,000 red knob-bearing units since 2000 generating in excess of $800 million in revenue, supported a finding of secondary meaning on the fourth factor, amount of sale and number of customers.  The court found the fifth factor—an established place in the market—also supported secondary meaning as Wolf sold its red-knobbed ranges through approximately 2,000 authorized dealers in 50 states.  Finally, the court found the sixth factor—proof of intentional copying—to be inferred through Viking’s actions in adopting a red knob as its first colored knob.  On balance, the court held that Viking had not presented evidence sufficient to overcome the presumption of validity and secondary meaning provided by Wolf’s registered trade dress.

Applying the six-factor likelihood-of-confusion test, the court also found that Wolf had demonstrated that Viking’s use of red knobs is likely to confuse consumers.  Among the factors to weigh in favor of a finding of likelihood of confusion were the similarity of the trade dress, similarity of trade channels, the strength of Wolf’s trade dress, and the possibility that Viking intentionally attempted to undermine Wolf’s trade dress by adopting the red knobs on its competing ranges.  The court found the knobs to have a similar size, shape, and color with only minimal differences that would not be noticed by consumers.  Interestingly, in its analysis of the area and manner of concurrent use factor, the court found more persuasive the fact that Wolf’s red knobs were the major exception to the black and stainless steel knobs pervading the range industry, than any evidence pointing to the actual similarities of the parties’ red-knobbed ranges or locations of sale.  Thus, for the factor purporting to analyze the similarity of the parties’ ranges, it was not the similarities of the parties’ products, but rather the dissimilarities of Wolf’s product to industry equivalents that was most significant.  And, as in the secondary-meaning analysis, the court found a reasonable jury could infer an intent to pass off.

The court further found that irreparable harm to Wolf from Viking’s trademark infringement was presumed.  Moreover, the court found that the balance of hardships weighed in favor of Wolf because Viking provided insufficient evidence to demonstrate the potential harm it would suffer if an injunction was granted.  Finally, the public interest would be served and the purposes of federal trademark law fulfilled by granting an injunction.

CONCLUSION
This decision highlights the intricacies of a secondary-meaning analysis in the context of the multistep, multifactor analysis undertaken to determine whether to grant a preliminary injunction.  Interestingly, the court found secondary meaning and a likelihood of confusion despite explicitly noting that the plaintiff did not present survey evidence on either point.  First, in evaluating secondary meaning, the court noted that neither party had presented evidence of consumer surveys, but ultimately concluded that the lack of survey evidence did not disturb the presumption and other strong evidence of secondary meaning.  Similarly, in evaluating likelihood of confusion, the court again noted that plaintiff had “not submitted any evidence, such as consumer surveys, to establish whether end-use consumers are confused,” yet evidently found this lack of such evidence overcome by the similarity of the parties’ trade dress and the inference of intentional copying.