Charles Jacquin Et Cie, Inc. v. Destileria Serralles, Inc.

Rule of Law:

The proper geographic scope of an injunction for trade dress infringement is limited to markets where the plaintiff can prove its trade dress has achieved significant market penetration, posing a real likelihood of confusion among consumers in that specific area.

Facts:

• Since 1968, Charles Jacquin Et Cie, Inc. ('Jacquin') has produced a line of cordials packaged in a distinctive bottle with a beveled or tapered bottom.
• Jacquin consistently used this bottle shape and featured it in approximately 75 percent of its promotional materials.
• In 1985, Destilería Serralles, Inc. ('DSI') was advised to produce a rum-based schnapps and to use a bottle similar to the Blackstone whiskey bottle, which also had a beveled bottom.
• In 1986, DSI provided a Blackstone bottle to a manufacturer with instructions for minor modifications, resulting in the bottle for its 'Don Juan' rum schnapps.
• The resulting Don Juan bottle, while different in some dimensions, had a similar front-facing appearance to Jacquin's bottle, primarily due to the shared beveled bottom design.
• In the fall of 1987, DSI, through its distributor Crown Marketing International ('Crown'), began selling Don Juan schnapps in ten U.S. states.
• In February 1988, Jacquin sent a cease and desist letter to Crown, asserting that the Don Juan bottle infringed on Jacquin's trade dress.

Procedural Posture:

• Jacquin sued DSI and Crown in the U.S. District Court, alleging trade dress infringement under the Lanham Act and seeking damages and injunctive relief.
• At trial, the district court granted a directed verdict in favor of DSI on Jacquin's claims for compensatory and punitive damages.
• The issue of injunctive relief was submitted to the jury via special interrogatories.
• The jury found that Jacquin's bottle shape had acquired secondary meaning and that DSI's bottle was likely to cause consumer confusion.
• Based on the jury's findings, the district court issued an injunction but limited its geographic scope to Pennsylvania and its product scope to 'cordials and specialties.'
• Jacquin, the appellant, appealed to the U.S. Court of Appeals for the Third Circuit, challenging the limited scope of the injunction and the directed verdict on punitive damages. DSI, the appellee, cross-appealed.