Häagen-Dazs, Inc. v. Frusen Glädjé Ltd.
210 U.S.P.Q. (BNA) 204, 1980 U.S. Dist. LEXIS 11886, 493 F. Supp. 73 (1980)
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Rule of Law:
A general marketing theme or commercial concept, such as a 'Scandinavian marketing theme,' is not protectable under trademark law. A competitor's imitation of such a theme does not constitute unfair competition unless it creates a likelihood of consumer confusion as to the source of the product.
Facts:
- Haagen-Dazs, Inc. produces and sells a premium ice cream marketed with a 'unique Scandinavian marketing theme.'
- Despite this theme, Haagen-Dazs's product is of domestic origin.
- The defendants began producing and distributing a competing premium ice cream under the brand name 'Frusen Gladjé.'
- The marketing for Frusen Gladjé also employed a Scandinavian theme, featuring a two-word name with an umlaut, a map of Scandinavia, and specific phrasing about ingredients on its container.
- The Frusen Gladjé product is also of domestic origin, produced in Pennsylvania.
- The brand names, container shapes, coloring, and designs of Haagen-Dazs and Frusen Gladjé are clearly distinguishable.
Procedural Posture:
- Haagen-Dazs, Inc. (plaintiff) filed a lawsuit against the producers and distributors of Frusen Gladjé ice cream (defendants) in the U.S. District Court for the Southern District of New York.
- The complaint alleged unfair competition in violation of the federal Lanham Act and New York State Law.
- Plaintiff Haagen-Dazs moved for a preliminary injunction to prevent defendants from continuing to use the allegedly infringing container.
- The district court held a hearing on the motion for a preliminary injunction.
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Issue:
Does a competitor's adoption of a 'Scandinavian marketing theme' for its premium ice cream, which includes a two-word foreign-sounding name with an umlaut and a map of Scandinavia on the packaging, constitute trademark infringement or unfair competition when the competitor's brand name and packaging are otherwise clearly distinguishable from the plaintiff's?
Opinions:
Majority - Judge Kevin Thomas Duffy
No. A competitor's use of a similar marketing theme does not constitute trademark infringement or unfair competition because a general marketing concept is not protectable, and there is no likelihood of consumer confusion between the products. The court reasoned that imitating an effective marketing technique is a legitimate part of a free enterprise system. The core of an infringement claim is the likelihood of confusion, which is absent here because the names 'Haagen-Dazs' and 'Frusen Gladjé,' as well as the container designs and coloring, are clearly distinguishable to a consumer. Furthermore, the plaintiff is barred from seeking equitable relief under the 'unclean hands' doctrine, as it engages in the same deceptive practice of marketing a domestic product with a false Scandinavian origin that it accuses the defendant of employing.
Analysis:
This decision clarifies the line between protecting a specific trademark and attempting to monopolize a broader marketing concept. It establishes that competitors are free to imitate successful marketing themes as long as they do not infringe on specific, protected marks or create consumer confusion about the product's source. The ruling reinforces that trademark law's purpose is to protect consumers and goodwill associated with a specific brand, not to shield a company from competition in marketing strategies. The court's application of the 'unclean hands' doctrine also serves as a potent reminder that a plaintiff seeking equitable relief must not have engaged in the same misconduct they allege.
