                                                                                                                           Opinions of the United
2000 Decisions                                                                                                             States Court of Appeals
                                                                                                                              for the Third Circuit


12-13-2000

Rose Art Industries, Inc. v. Swanson
Precedential or Non-Precedential:

Docket 98-6489




Follow this and additional works at: http://digitalcommons.law.villanova.edu/thirdcircuit_2000

Recommended Citation
"Rose Art Industries, Inc. v. Swanson" (2000). 2000 Decisions. Paper 249.
http://digitalcommons.law.villanova.edu/thirdcircuit_2000/249


This decision is brought to you for free and open access by the Opinions of the United States Court of Appeals for the Third Circuit at Villanova
University School of Law Digital Repository. It has been accepted for inclusion in 2000 Decisions by an authorized administrator of Villanova
University School of Law Digital Repository. For more information, please contact Benjamin.Carlson@law.villanova.edu.
Filed December 13, 2000

UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT

No. 98-6489

ROSE ART INDUSTRIES, INC., a New Jersey Corporation;
WARREN INDUSTRIES, INC., an Indiana Corporation

v.

CARL SWANSON, an individual;
THE SWANSON GROUP, INC., a Delawar e Corporation;
RAYMOND GEDDES & COMPANY, INC., a
Maryland Corporation

       Rose Art Industries, Inc.,

       Appellant

Appeal from the United States District Court
for the District of New Jersey
(D.C. Civil Action No. 98-cv-02263)
District Judge: Honorable Joseph A. Greenaway, Jr.

Argued September 10, 1999

Before: ROTH and WEIS, Circuit Judges
SHADUR,1 District Judge

(Opinion filed: December 13, 2000)



_________________________________________________________________
1. Honorable Milton I. Shadur, United States District Court Judge for the
Northern District of Illinois, sitting by designation.
       Roslyn S. Harrison, Esquire (Argued)
       Joseph F. Falgiani, Esquire
       Joan T. Pinaire, Esquire
       Nicholas Albano III, Esquire
       McCarter & English, LLP
       Four Gateway Center
       100 Mulberry Street
       Newark, New Jersey 07102

        Attorneys for Appellant

       Kathryn Miller Goldman, Esquire
        (Argued)
       Donna M.D. Thomas, Esquire
       Astrachan, Gunst, Goldman &
        Thomas, P.C.
       20 South Charles Street, 6th Floor
       Baltimore, Maryland 21201

        Attorneys for Appellee

OPINION OF THE COURT

ROTH, Circuit Judge:

The issue in this appeal is colorful. The appellant, Rose
Art Industries, Inc. (Rose Art), claims that the appellee,
Raymond Geddes and Company (Geddes), engaged in unfair
competition in violation of section 43(a) of the Lanham Act.
Specifically, Rose Art, a distributor of crayons, markers,
and colored pencils, seeks to enjoin Geddes fr om
distributing various stationery products (markers, crayons,
and colored pencils) in packaging that Rose Art alleges
infringes its trade dress.

The District Court held that Rose Art's packaging did not
have a "consistent overall look" and thus did not constitute
recognizable trade dress. The District Court denied Rose
Art's motion for a preliminary injunction because it found
that Rose Art had not demonstrated a reasonable
probability of success on the merits.

We conclude that the District Court misapplied the legal
standard in determining whether the characteristics of

                                  2
three types of Rose Art's packaging constituted recognizable
trade dress. We will reverse the District Court's denial of
Rose Art's motion for a preliminary injunction and remand
this case for further proceedings consistent with this
opinion.

I. Facts

Rose Art Industries, Inc., a New Jersey corporation, has
been manufacturing and selling stationery pr oducts,
including crayons, colored pencils, and markers, for over
sixty years. Rose Art is currently the second-largest seller
in the United States of children's crayons, markers, and
chalks.

Raymond Geddes and Company, a Maryland corporation,
was founded in 1923 and originally sold novelty items.
Geddes subsequently expanded its operations in or der to
sell office supplies and stationery products to elementary
school bookstores. Initially, Geddes did not have its own
line of crayons. It purchased crayons fr om third parties,
such as Crayola or Sargent, for resale to schools. In 1994,
however, Geddes developed its own line of crayons called
Spectrum, which it marketed and sold to elementary school
bookstores in packaging designed by an independent
designer.2

In 1996, hoping to expand its sale of stationery pr oducts
into national mass merchandise retail outlets, Geddes hired
Chris Blackmon as its national sales manager to develop
mass market distribution channels for Geddes's pr oducts.
Under Blackmon's direction, Geddes's Cr eative Director,
Aleksandra Gulan, developed a product line under the
name KidStuf 1. KidStuf 1 included markers and colored
pencils, but not crayons.

In 1997, Geddes decided to further expand its mass
market offerings by designing an art supply line, including
a full range of markers, colored pencils, and crayons.
Geddes targeted older children, ages 10-12, for its new line
_________________________________________________________________

2. Engagement Manufacturing Company, a Taiwanese company that
manufactured Rose Art's crayons, also manufactured Geddes's Spectrum
crayons.

                               3
and named it "ARTiculates," suggesting a more
sophisticated arts and crafts product. Because Geddes felt
that the KidStuf 1 package design was not suitable for a
mass market line, it decided to create a new package design
for ARTiculates. Before cr eating the new design, Gulan and
Blackmon obtained samples and catalogs of other
manufacturers' retail stationery pr oducts, including Rose
Art's.

Gulan completed the design of the ART iculates packaging
in September 1997, in time for Geddes to show the new line
at the industry trade show in November. The ARTiculates
packaging was characterized by a yellow backgr ound with
a contrasting bold, bright color illustration of the product
on the box and the product type written in white letters on
a black oval-shaped band. The ARTiculates package also
featured the legend "since 1923" and the statement: "We
invite your comments about our product. Please write to:
Raymond Geddes & Company, Consumer Affairs, P .O. Box
24829, Baltimore, MD 21220." Both of these legends were
new additions to the Geddes product design.

In July 1997, Dollar General Corporation (Dollar General)3
conducted its standard annual bid process. During the bid
process, also known as a line review, Dollar General
accepted bids from different manufacturers seeking to
supply Dollar General with stationery products for 1998.
Rose Art instructed its manufacturer repr esentative, Carl
Swanson, to submit bids to Dollar General for Rose Art's
products. Unbeknownst to Rose Art, Swanson was also
Geddes's manufacturer representative. Rose Art alleges that
Swanson failed to submit bids for a number of Rose Art's
products but that he did submit bids to Dollar General on
behalf of Geddes for its stationery products. 4
_________________________________________________________________

3. Dollar General is a multi-billion dollar discount retailer with over
3,600 stores nationwide.

4. In its complaint, Rose Art asserted claims against Swanson and
Geddes for misappropriation of Rose Art's trade secrets. Rose Art and
Swanson have settled their claim. The only issue before the District
Court on Rose Art's motion for a preliminary injunction was whether
Geddes's packaging infringed Rose Art's trade dr ess.

                               4
In August 1997, Chris Blackmon and Swanson met with
Gail Moore, the buyer for Dollar General's stationery
department. At this meeting, Blackmon showed Moor e the
KidStuf 1 line of products. In a second meeting on October
2, 1997, Blackmon showed Moore some crayon and marker
samples in the ARTiculates packaging. Moore expressed
interest in Geddes's ARTiculates line but did not like the
ARTiculates packaging because it was too wordy, busy, and
dull. She told Blackmon that she was looking for a package
that was more basic, simple, and colorful with a design that
would appeal to younger children. Moore instructed
Blackmon to create a package that looked mor e like
Crayola's package.5 Blackmon agr eed to provide Moore with
a revised package design.

Based on Moore's directions, Blackmon instructed Gulan
to redesign the ARTiculates packaging using the KidStuf
name and modifying the package to make it brighter and
simpler. The new design, which the parties r efer to as
KidStuf 2, consists of the following characteristics: a bright
yellow background on the top half of the package with a
bright contrasting color on the bottom, the pr oduct type in
white letters on a black band in the middle of the package,
a rainbow backdrop (referred to by the District Court as a
"swish") on which the KidStuf mark is superimposed, the
statement that the product is "Certified Non-Toxic," the
legend "since 1923", and the statement "W e invite your
comments about our product. Please write to: Raymond
Geddes & Company, Consumer Affairs, P.O. Box 24829,
Baltimore, MD 21220."

On October 6, 1997, Geddes sent artwork, depicting the
KidStuf 2 package design, to Dollar General. On October
10, Geddes sent forty-eight mock-up packages. The mock-
ups comprised other manufacturers' crayon packages,
including Rose Art's, with Geddes's KidStuf 2 package
design wrapped around the other manufactur ers' packages.
The forty-eight Geddes mock-up packages were used by
Dollar General in its planogram room (wher e the company
_________________________________________________________________

5. Rose Art contends that Geddes must have been instructed to imitate
Rose Art's packaging because the resulting package does not resemble
Crayola's but rather Rose Art's.

                               5
displayed products as if they were on a shelf in a store) for
review by Dollar General's executives in their selection of
new vendors. In December 1997, after completing its
standard annual bid process, Dollar General selected
Geddes as its primary supplier of stationery pr oducts for
1998.

II. Procedural History

On May 20, 1998, Rose Art filed suit in U.S. District
Court for the District of New Jersey, claiming unfair
competition in violation of section 43(a) of the Lanham Act.
Rose Art alleged that Geddes's KidStuf 2 packaging and its
ARTiculates packaging were confusingly similar to Rose
Art's packaging, especially Rose Art's Primary Color
Packaging.

In an attempt to settle this litigation, Geddes in July of
1998 created a new package design for its stationery
products (New Package Design). Geddes's New Package
Design prominently displays the "Raymond Geddes" logo
below the product's name. The box is characterized by a
gold-yellow color on the top portion of the box and a
contrasting purple-magenta color on the bottom; the
product's type (e.g., crayons) is featur ed in white letters on
top of a multi-tiered band of shades of blue. In addition, the
New Package Design displays the products themselves
either through a die cut, which reveals the markers or
pencils, or through crayon illustrations, arranged in a
rainbow design. Despite Geddes's efforts to settle, however,
Rose Art now alleges that the New Package Design is also
confusingly similar to Rose Art's packaging, especially the
Rose Art Neon Color Packaging.

On August 3, 1998, Rose Art filed a motion for a
preliminary injunction to stop Geddes fr om selling the
alleged infringing packaging. The District Court denied the
motion. See Rose Art Indus., Inc. v. Raymond Geddes & Co.,
31 F. Supp. 2d 367 (D.N.J. 1998).

Rose Art claims on appeal that its trade dress for
crayons, markers, and colored pencils is composed of the
following elements: (1) a prominent band that is either
straight or wavy and often black in color that cuts across

                                6
the middle of the front of the package, extending to the
sides with the words "CRAYONS" or"WASHABLE
MARKERS" or other descriptive term in white letters
imprinted on the band (the "Band and Letter feature"); (2)
a yellow background on the top of the package with a
contrasting background color (either red, purple, pink, or a
combination of purple fading to red) on the bottom of the
package; and (3) a prominent display of the Rose Art logo
in golden yellow (either foil or print) or r ed, either with or
without a rainbow "swish" design behind the logo on the
front of the package. In addition, in its pr esentation to the
District Court, Rose Art included three other elements in its
claim of infringement: (1) the statement "since 1923"; (2)
the statement on the front of the package that the product
is "Certified Non-Toxic;" and (3) the sentence inviting
consumer comments, "Rose Art invites your comments and
questions about this product. Please write to Rose Art
Industries, Inc., Consumer Affairs, 6 Regent St., Livingston,
NJ 07039 or call 1-800-CRAYONS."

Rose Art presents three differ ent subgroups of product
packaging as recognizable trade dress: Rose Art Primary
Color Packaging, Rose Art Neon Color Packaging, and Rose
Art Color Fade Packaging. Rose Art seeks trade dr ess
protection for each of these three subgr oups. Rose Art
contends that its Primary Color Packaging is used to
package traditional crayons, markers, and chalk pr oducts;
it features the Band and Letter feature (with white letters
over a straight or wavy black band), a yellow backgr ound
on the top of the package, and a red or purple background
on the bottom of the package with the Rose Art logo in
golden yellow print or gold foil and rainbow "swish."
Similarly, Rose Art contends that its Neon Color Packaging,
as the name suggests, is used to package neon color
crayons and scented, shaped, or "color change" markers; it
features the Band and Letter feature (with white letters over
a straight or wavy purple, pink or black band), a
flourescent yellow background on the top of the package,
and the Rose Art logo with the rainbow "swish" on the
bottom emblazoned on a pink or purple backgr ound.
Finally, Rose Art contends that its Color Fade Packaging,6
_________________________________________________________________

6. The Rose Art Color Fade Packaging was originally only used to
package products sold at Wal-Mart.

                               7
which is used to package crayons, bold and classic
markers, colored pencils, and modeling clay, features the
Band and Letter feature, with white letters over a black
band, the Rose Art logo in red letters above the band, a
yellow background on the top of the package, and a color
fade from purple to red background on the bottom. In
addition, the packaging for colored pencils and some
crayons displays the crayons or colored pencils on the
bottom right hand corner of the package. Rose Art admits
that some of its packages combine features fr om more than
one of the three subgroups for which it seeks trade dress
protection but claims that even those packages fall "clearly
within the Rose Art Family Trade Dress."

Rose Art markets, advertises, and sells its pr oducts in
many other package designs, as reflected in the materials
gathered by Geddes for the preliminary injunction hearing
(purchased either at Target, T oys "R" Us or KMart or from
Rose Art's catalog). However, Rose Art contends that
crayons, markers, and colored pencils packaged in Primary
Color Packaging, Color Fade Packaging, and Neon Color
Packaging constitute "the vast majority of its crayon[s],
marker[s] and colored pencil[s]."

III. Discussion

A. Jurisdiction and Standard of Review

This action was filed by Rose Art pursuant to section
43(a) of the Lanham Act. Section 43(a) creates a federal
cause of action for unfair competition and pr ohibits the sale
of goods by use of

       any word, term, name, symbol, or device, or any
       combination thereof, or any false designation of origin,
       false or misleading description of fact, which--(A) is
       likely to cause confusion, or to cause mistake, or to
       deceive as to the affiliation, connection, or association
       of such person with another person, or as to the origin,
       sponsorship, or approval of his or her goods, services,
       or commercial activities by another person. . ..

15 U.S.C. S 1125(a) (1999); see American Greetings Corp. v.
Dan-Dee Imports, Inc., 807 F.2d 1136, 1140 (3d Cir. 1986).

                               8
The District Court had federal question jurisdiction
pursuant to 28 U.S.C. S 1331. See 28 U.S.C. S 1331 (1999).
We have appellate jurisdiction to review the District Court's
interlocutory order denying a preliminary injunction
pursuant to 28 U.S.C. S 1292(a)(1). See 28 U.S.C.
S 1291(a)(1) (1999). We review the District Court's order
denying a preliminary injunction under an abuse of
discretion standard, its factual findings under a clear error
standard, and its findings of law under a de novo standard.
See NutraSweet Co. v. Vit-Mar Enter., Inc., 176 F.3d 151,
153 (3d Cir. 1999).

B. Background

The District Court determined that "Rose Art seeks trade
dress protection not for the overall appearance of a single
product, but rather for the overall look of a line of
packaging for three products--crayons, markers and
colored pencils." Rose Art Indus. Inc. v. Raymond Geddes
and Co., 31 F. Supp. 2d 367, 373 (D.N.J. 1998). The
District Court noted that the Third Cir cuit Court of Appeals
had not addressed the plaintiff 's bur den in such a case,
but acknowledged that the Second Circuit, Fifth Circuit,
and district courts within the Second Circuit had
recognized such trade dress protection.

The District Court held that a plaintiff seeking protection
for a line of products, rather than a single pr oduct, must
establish that the series or line of products for which it
seeks trade dress protection has a "consistent overall look."
See id. (quoting Walt Disney Co. v. GoodTimes Home Video
Corp., 830 F. Supp. 762, 766 (S.D.N.Y . 1993)).

Applying the "consistent overall look" standar d to this
case, the District Court concluded that "the variations in
Rose Art's package design are not slight but rather
represent a kaleidoscope of color combinations and design
formats which fail to convey a `consistent overall look' to
the consumer." Rose Art, 830 F .Supp at 376. Addressing
each of the six elements asserted by Rose Art to be part of
its trade dress, the District Court concluded that:

       Rose Art's trade dress varies so widely that consumers
       cannot conclude that the products come fr om one

                               9
       source. Accordingly, this Court concludes that Rose Art
       uses numerous different styles of packaging for its
       crayons, markers and colored pencils such that its
       packaging fails to present a "consistent overall look"
       and does not qualify for trade dress pr otection under
       the law.

Id. at 378.

The District Court ended its analysis with the finding of
no consistent overall look, concluding that the Appellants
had not demonstrated a reasonable probability of success
on the merits.7 Since the r equirements of a trade dress
infringement claim are conjunctive, the court did not
analyze the remaining elements: (1) inher ent distinctiveness
or secondary meaning, (2) non-functionality, and (3)
likelihood of confusion.

C. Analysis

1. The Proper Legal Standard for Identifying Recognizable
       Trade Dress

The application of section 43(a) of the Lanham Act is not
limited to trademarks. Section 43(a) also pr ovides
protection to "certain words, symbols, collocations of colors
and designs, or other advertising materials or techniques"
that the purchasing public has come to associate with
goods from a single source. R.J.R. Foods, Inc. v. White Rock
Corp., 603 F.2d 1058, 1059 (2d Cir . 1979); see also Duraco
Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1438
(3d Cir. 1994) (holding that section 43(a) of the Lanham Act
protects trade dress).

Trade dress has been defined as the total image or overall
appearance of a product, and includes, but is not limited
to, such features as size, shape, color or color
combinations, texture, graphics, or even a particular sales
technique. See Two Pesos, Inc. v. Taco Cabana, Inc. 505
U.S. 763, 765 n.1 (1992).
_________________________________________________________________

7. The District Court did not address the other three components of the
preliminary injunction standard.

                               10
Typically, in a trade dress action under section 43(a) of
the Lanham Act, the plaintiff is requir ed to prove that "(i)
the trade dress is distinctive, either because it is inherently
distinctive or because it has acquired distinctiveness; (ii)
the trade dress is nonfunctional; and (iii) the defendant's
use of plaintiff 's trade dress is likely to cause consumer
confusion." Duraco Prods., 40 F .3d at 1439. This three-part
inquiry alone, however, is insufficient when the plaintiff in
a trade dress action seeks protection under the Lanham Act
for a series or line of products or packaging. As the Second
Circuit Court of Appeals has noted, in contrast to a
situation where the plaintiff is seeking protection for a
specific package or a single product, "when protection is
sought for an entire line of products, our concern for
protecting competition is acute." Landscape Forms, Inc. v.
Columbia Cascade Co., 113 F.3d 373, 380 (2nd Cir. 1997);
see also Regal Jewelry Co. v. Kingsbridge Int'l, Inc., 999 F.
Supp. 477, 486 (S.D.N.Y. 1998) ("[C]ourts consider . . .
broader product line claims with an `acute' concern for
protecting competition given that any r emedy could
potentially cover a wide range of products."). This concern
led to the development of the "consistent overall look"
standard.

In the first case to set forth the "consistent overall look"
standard, Walt Disney Co. v. Good T imes Home Video Corp.,
830 F. Supp. 762 (S.D.N.Y. 1993), the plaintiff sought
protection not for a specific package or the appearance of a
single product but for the overall appearance of a number
of different packages. See id. at 766. The district court in
Walt Disney, noting the distinction between Disney's claim
and the typical claim in a single product trade dress action,
stated:

       Disney has a burden which most plaintif fs alleging
       trade dress infringement do not need to carry. Disney
       must establish the existence of a recognizable trade
       dress. That is, Disney must establish that its
       videocassette packages have a consistent overall look.
       If established, this trade dress is entitled to protection
       under Lanham Act S 43(a) if it is distinctive, meaning
       capable of identifying Disney as the source of the
       videocassettes, and if GoodTimes' trade dr ess is likely

                               11
       to mislead consumers to believe that GoodTimes'
       Aladdin is the Disney version.

Id.

Rose Art argues, however, that the District Court applied
the wrong legal standard when it applied the "consistent
overall look" standard before it considered the black letter
law standard of non-functionality, distinctiveness, and
likelihood of confusion. Rose Art contends that the District
Court should have required Rose Art to meet only the latter
standard.

We are persuaded that the "consistent overall look"
standard, set forth in Walt Disney and applied by the
Second Circuit Court of Appeals in Landscape Forms and
other cases, is the appropriate threshold inquiry in a trade
dress case where the plaintiff seeks protection for a series
or line of products or packaging. See, e.g. , Samara Brothers,
Inc. v. Wal-Mart Stores, Inc., 165 F.3d 120, 125-27 (2d Cir.
1998), rev'd on other grounds, 120 S. Ct. 1339, 1345-46
(2000); Landscape Forms, Inc., 113 F .3d at 380-81;
Innovative Networks, Inc. v. Satellite Airlines T icketing Ctrs.,
Inc., 871 F. Supp. 709, 722-23 (S.D.N.Y . 1995).8

Because of the broad reach that pr otection of trade dress
for a series or line of products would embrace, we will
require this more stringent test before the non-
functionality/distinctiveness/likelihood of confusion test is
applied. A plaintiff, seeking protection for a series or line of
_________________________________________________________________

8. The District Court also cites Chevr on Chemical Co. v. Voluntary
Purchasing Groups, Inc., 659 F.2d 695 (5th Cir. 1981) and Keystone
Camera Products Corp. v. Ansco Photo-Optical Products Corp., 667 F.
Supp. 1221 (N.D. Ill. 1987) as cases that have applied the "consistent
overall look" standard. While these cases ar e consistent with and provide
support for such a standard, the "consistent overall look" standard was
not articulated until 1993 in Walt Disney , 830 F. Supp. at 766; cf.
Chevron, 659 F.2d at 697 (describing the Ortho packaging used for "125
law and garden products in a `uniform' family trade dress"); Keystone,
667 F. Supp. at 1229 ("Before analyzing secondary meaning, confusion
and functionality, this court must . . . pause to consider whether
Keystone has a protectable trade dress for its cameras which bear
clashing, contrasting, multiple color combinations with a distinctive dot
pattern.").

                               12
products, must first demonstrate that the series or line has
a recognizable and consistent overall look. Only after the
plaintiff has established the existence of r ecognizable trade
dress for the line or series of products should the trial court
determine whether the trade dress is distinctive, whether
the trade dress is nonfunctional, and whether the
defendant's use of plaintiff 's trade dr ess is likely to cause
consumer confusion. As such, we hold today that the
District Court applied the correct legal standard when it
required Rose Art first to show that the three packaging
designs at issue, Primary Color Packaging, Neon Color
Packaging, and Color Fade Packaging, each had a
"consistent overall look." We agr ee with the District Court
that "if a plaintiff seeking trade dr ess protection cannot
show that its packages have a `consistent overall look,' the
trade dress that the defendant is allegedly infringing `does
not exist,' " and the defendant must pr evail. Rose Art, 31 F.
Supp. 2d at 374.

In endorsing the "consistent overall look" standard,
however, we do not require that the appearance of the
series or line of products or packaging be identical. As the
District Court stated "a party may have trade dr ess rights
even though there are slight variations in its package
design so long as the change does not alter the distinctive
characteristics and the trade dress conveys a single and
continuing commercial expression." See id. at 373 (citing
Beech-Nut Packing v. Lorillard Co., 229 F . Supp. 834, 849-
50 (D.N.J. 1924), aff 'd 7 F.2d 967 (3d Cir. 1925), aff 'd 273
U.S. 629 (1927)).

2. The District Court's Application of the Consistent Overall
       Look Standard

Rose Art next contends that the District Court impr operly
applied the "consistent overall look" standar d in this case;
that it erred as a matter of law by considering products not
at issue. Rose Art is seeking trade dress pr otection only for
its Primary Color Packaging, Color Fade Packaging, and
Neon Color Packaging. The District Court, however ,
considered products beyond these pr oduct lines to support
its conclusion that each of these Rose Art pr oduct lines did
not have a "consistent overall look."

                               13
As a preliminary matter, the plaintif f in a trade dress
action under section 43(a) of the Lanham Act is fr ee to seek
trade dress protection for whatever pr oducts or packaging
it sees fit. A plaintiff can seek trade dr ess protection either
for a single product or for a whole line of pr oducts. See,
e.g., Ideal Toy Corp. v. Plawner T oy Mfg. Corp., 685 F.2d 78,
79 (3d Cir. 1982) (single product); Regal Jewelry, 999 F.
Supp. at 481 (S.D.N.Y. 1998) (line of pr oducts). Moreover,
in seeking protection for the trade dress of a line of
products, the plaintiff can define the line as it sees fit. In
addition, there is nothing to constrain a plaintiff from
seeking protection for several differ ent lines of products (or
of the packaging of those products). In pr esenting a case for
trade dress infringement, a plaintiff can group together any
number of products in any way it sees fit, as long as the
products have a consistent overall look.

Here, Rose Art has alleged trade dress infringement of
three distinct package designs: its Primary Color Packaging,
its Color Fade Packaging, and its Neon Color Packaging.
The District Court, however, in deter mining whether the
packaging of these three product lines constituted
recognizable trade dress (that is, whether the packaging
had a "consistent overall look") consider ed product
packaging outside the Primary Color Line, the Color Fade
Line, and the Neon Color Line.

The District Court, to support its conclusion that Rose
Art had not established the existence of recognizable trade
dress, found that "certain packages of Rose Art crayons do
not have a yellow background on the top of the package"
and thus found lacking a critical element of Rose Art's
alleged trade dress. Rose Art, 31 F . Supp. 2d at 376.
However, one of the crayon packages r eferred to by the
District Court was the Glow Crayons package with a black
background on the top half;9 Glow Crayons are not a part
of the Primary Color Line, the Color Fade Line, or the Neon
Color Line. Similarly, in concluding that Rose Art used
eight different background color combinations as a part of
_________________________________________________________________

9. During the preliminary injunction hearing, Rose Art specifically stated
that it would be willing to abandon efforts to protect the packaging of
its
glow-in-the-dark crayons.

                               14
the trade dress it is seeking to protect, see id., the District
Court considered products not within the designated lines:
glow crayons, glitter and brilliant color crayons, and
fluorescent, glitter and superscented crayons. In addition,
in concluding that all Rose Art packages do not use the
Band and Letter Feature, see id., the District Court
considered products not within the designated lines: Super
Box of Crayons, Super Jumbo Crayons, Pre-School
Crayons, Super Rainbow Pack, and Washable Markers in a
bucket. Finally, in concluding that Rose Art used eight
different colors for its Band and Letter Feature, see id., the
District Court again considered products not within the
designated lines, including washable markers and glitter
and brilliant crayons.

In addition to considering products not within the
designated lines, the District Court consider ed designated
products that were packaged in dif ferent types of boxes.
The District Court pointed out that Rose Art used multiple
package designs for the same product. For example,
washable markers and classic colors were packaged using
different package designs, see id. at 378; traditional
crayons were packaged in the Primary Color Packaging with
a yellow background on the top half of the package and the
Rose Art logo with the rainbow swish on the bottom in front
of a red or purple background but they wer e also packaged
in a box with a red background on top, a yellow
background on the bottom and the Rose Art logo displayed
on the upper left hand corner of the box, superimposed on
a triangle. See id. at 376. Scented markers were packaged
in the Neon Color Packaging with the rainbow swish on the
bottom of the package but the rainbow swish did not
appear on all packages of scented markers. The District
Court concluded that this use of other types of packaging
for designated products undermined Rose Art's claim of
recognizable trade dress.

The District Court's reasoning in this r egard is flawed.
The fact that Rose Art uses a variety of packages for a
product such as traditional crayons would be fatal to Rose
Art's case if Rose Art claimed that all traditional crayons
were packaged in Rose Art's Primary Color Packaging, but
Rose Art makes no such claim. Certainly the fact that Rose

                               15
Art packages the same product in several dif ferent types of
packaging does not prevent Rose Art from seeking trade
dress protection for one of these packaging designs.10

If Rose Art distributed three differ ent lines of crayons,
each line having its own distinctive packaging, and if the
packaging of each line has its own "consistent overall look,"
then the packaging of each line would constitute
recognizable trade dress regar dless of whether the
packaging of the three lines together have a "consistent
overall look" and regardless of whether some crayons were
packaged in other types of packaging. Even if Rose Art
distributed the same products, for example, generic
crayons, markers, and colored pencils in fifteen different
package designs for each of fifteen differ ent customers, this
fact alone would not prevent Rose Art fr om obtaining trade
dress protection for one of the fifteen different packaging
styles. One or more of the package designs could be
recognizable trade dress as long as it had a "consistent
overall look." If, however, we wer e to follow the District
Court's logic, a manufacturer or distributor would not be
able to seek trade dress protection unless all its packaging
had a "consistent overall look," regar dless of whether the
individual line had a "consistent overall look." This
standard is legally untenable.1 1

We conclude that when applying the "consistent overall
look" standard, that is, when determining whether the
trade dress alleged by the plaintiff is r ecognizable,
protectable trade dress, a trial court should consider only
_________________________________________________________________

10. To use a more familiar example, Coca-Cola bottles would certainly
be, at a minimum, recognizable trade dr ess despite the fact that Coca-
Cola is also packaged in cans and that the design of a Coca-Cola bottle
in no way resembles the design of a Coca-Cola can.

11. A simple analogy may be helpful: If a hypothetical company that
produced three products (one with r ed packaging, one with blue
packaging, and one with white packaging) sought trade dress protection
for the product packaged in red, it would almost certainly be able to
show that the red packaging was recognizable trade dress as defined by
the "consistent overall look" standard used in the Second Circuit and
adopted by us today, even if the three dif ferent types of packaging
together did not have a "consistent overall look." Counsel for Geddes
rightly conceded this point at oral argument.

                               16
the products or packaging for which the plaintiff is seeking
trade dress protection. See Regal Jewelry, 999 F. Supp. at
486-90 (determining whether alleged trade dr ess had a
consistent overall look by evaluating only the six novelty
items at issue despite the fact that the plaintif f distributed
almost 200 different novelty items).

The proper question is not whether Rose Art has
consistently applied one trade dress to its packages of
crayons, markers, and colored pencils, but rather whether
Rose Art's Primary Color Packaging, Neon Color Packaging,
and/or Color Fade Package each individually has a
"consistent overall look."12 As such, we also hold today that
when a plaintiff seeks trade dress pr otection under section
43(a) of the Lanham Act for multiple product lines or
packaging, a District Court should evaluate each of the
lines separately. In this case, for example, in determining
whether Rose Art's Primary Color Packaging has a
"consistent overall look," the District Court should consider
this line alone, independently of the other lines for which
Rose Art seeks trade dress protection.

IV. Conclusion

Because the District Court misapplied the "consistent
overall look" standard, we will reverse the District Court's
denial of Rose Art's motion for a preliminary injunction and
_________________________________________________________________

12. In considering the trade dress implications of the fact that Rose Art
markets the same product in differ ent packages, we are not concerned
by the existence of different styles of packaging. If a manufacturer
chooses to seek trade dress protection for too insignificant a line of
products, the manufacturer may pass the"consistent overall look" test
but then founder on distinctiveness or likelihood of confusion. The
temptation to define too thinly, therefor e, is not without its own
inherent
limitations.

We also note that the District Court's statement that "Rose Art's trade
dress varies so widely that consumers cannot conclude that the products
come from one source," while per haps consistent with or a proxy for the
District Court's conclusion that Rose Art's alleged trade dress did not
have a "consistent overall look," is strikingly similar to the third part
of
a section 43(a) claim--whether consumers ar e likely to confuse the
source of the plaintiff 's product with that of the defendant's product.

                               17
remand this case for further proceedings consistent with
this opinion.13 On remand, the trial court should determine
whether each of the three packaging designs for which Rose
Art seeks trade dress protection, the Primary Color
Packaging, the Color Fade Packaging and the Neon Color
Packaging, has a "consistent overall look." If on remand,
the District Court determines that one or mor e of these
packaging designs does have a "consistent overall look" and
thus constitutes recognizable, protectable trade dress, the
District Court should then, in the context of evaluating
Rose Art's request for a preliminary injunction, determine
whether the trade dress is distinctive, either because it is
inherently distinctive or because it has acquir ed
distinctiveness, whether the trade dress is nonfunctional,
and whether Geddes's use of Rose Art's trade dr ess is likely
to cause consumer confusion.

A True Copy:
Teste:

       Clerk of the United States Court of Appeals
       for the Third Circuit
_________________________________________________________________

13. We express no opinion concerning the merits of the plaintiff's claim,
that is, whether the Primary Color Packaging, the Color Fade Packaging,
or the Neon Color Packaging constitutes recognizable, protectable trade
dress, is distinctive, is non-functional, or is likely to cause consumer
confusion.

                               18
