The Yankee Candle Company, Inc. v. The Bridgewater Candle Company, LLC

259 F.3d 25 (1st Cir. 2001)

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Nature of the Case

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Facts

The district court identified three ways in which P claimed that D had infringed its trade dress: (i) by copying P's method of shelving and displaying candles in its stores, called the 'Vertical Display System'; (ii) by copying the overall 'look and feel' of P's Housewarmer line of candles; and (iii) by copying the design of P's merchandise catalog, specifically its one fragrance per page layout. The court first held that the Vertical Display System was 'manifestly functional,' both in its arrangement of candles by color and in its use of wooden shelving, and concluded that 'P cannot invoke the Lanham Act to appropriate such a conventional method of presenting its wares.' The 'look and feel' and the layout of the Yankee catalog alleged trade dress infringement of a product design/configuration, rather than infringement of product packaging. Under Wal-Mart it held that neither aspect could be inherently distinctive as a matter of law unless they acquired secondary meaning. The evidence introduced by P fell far short of the 'vigorous' evidentiary standard required to show secondary meaning in a product design/configuration case. P had failed to introduce any survey evidence, which this Court has described as the 'preferred' manner of demonstrating secondary meaning. P had not introduced any circumstantial evidence indicating that the public had made a conscious connection between the trade dress at issue and P as the source of that trade dress. As for the catalog, the court held that 'no fair-minded person, looking at D's document, could possibly view it as an attempt to 'pass off' the D catalog as P's. The court also held in the alternative that 'no reasonable juror could conclude that there is a likelihood of confusion, where clearly marked company names are featured on the face of the products and catalogs.' P appealed. P claims the district court failed to analyze the 'look and feel' of the entire product. P argues that the district court erroneously defined its trade dress as product design/configuration, and in so doing, proceeded directly to the question of secondary meaning without considering that the dress might be inherently distinctive. P claims that it introduced sufficient evidence of secondary meaning to survive summary judgment. P argues that it introduced sufficient evidence of the likelihood of confusion to survive summary judgment had the district court needed to reach that issue.