CITE:  58 F.3d 27
CMON:  June 1995
PLAIN: Jeffrey Milstein, Inc.
DEFND: Greger, Lawlor, Roth, Inc.
COURT: United States Court of Appeals for the Second Circuit
DATE:  June 19, 1995
Appeal from the order of the United States District Court for the
Southern District of New York (Kevin Thomas Duffy, Judge), entered
December 19, 1994, denying plaintiff's motion for a preliminary
injunction enjoining defendant from copying the unregistered trade dress
of plaintiff's greeting cards.  Affirmed. As Amended June 27, 1995.

  Trade dress law does not protect an idea, a concept, or a generalized
  type of appearance.

JUDGE: JON O. NEWMAN, Chief Judge:
Before: NEWMAN, Chief Judge, VAN GRAAFEILAND and CABRANES, Circuit Judges.


This appeal, arising in the context of greeting card designs, poses issues
concerning the limits of trade dress protection under section 43(a) of the
Lanham Act, 15 U.S.C. Section 1125(a) (1988).

Plaintiff-appellant Jeffrey Milstein, Inc., d/b/a Paper House Productions
("Paper House"), appeals from the order of the District Court for the Southern
District of New York (Kevin Thomas Duffy, Judge), entered December 19, 1994,
denying Paper House's motion for a preliminary injunction enjoining
defendant-appellee Greger, Lawlor, Roth, Inc., d/b/a/ Triangle Enterprises
("Triangle"), from copying the unregistered trade dress of Paper House's
greeting cards. That dress in essence comprises photographs die cut to
the shapes of the objects depicted on the cards. According trade dress
protection to this format would effectively grant Paper House a monopoly
in the idea of using die-cut photographs on greeting cards. For reasons
set forth below, we affirm.


Appellant Paper House is a New York corporation engaged in the business
of manufacturing and selling greeting cards and note cards. It started its
business in 1982. Its greeting cards are typically a sheet of paper, folded
vertically, that has been cut to the outline of an animal, person, or object
depicted in a color photograph on the front panel of the card. With this
die-cutting technique, the photograph completely fills the front panel.
The inside panels and the back panel of the card are usually blank. The
cards are packaged in clear cellophane bags.

Appellee Triangle is a California company that has manufactured stationery
products for the past eight years. Its products include die-cut gift bags,
die-cut stand ups, and die-cut note pads. Some time between May and August
1994, Triangle began to produce and sell "tri-cut" photographic greeting
cards.  Unlike Paper House's greeting cards, which depict the photographic
image only on the front face, Triangle's cards depict the die-cut image on
the front of all three panels of each card. Like Paper House's cards,
Triangle's cards have blank interiors and are packaged in clear cellophane

Paper House instituted this action, alleging that Triangle had copied its
greeting card format, in violation of section 43(a) of the Lanham Act and
New York's common law of unfair competition. Of Triangle's complete line
of tri-cut greeting cards, Paper House selected six that allegedly copied
Paper House's trade dress, though, as the District Court noted in its
opinion, Paper House is not seeking protection with respect to only the
handful of cards depicting photographic images similar to those used by
Triangle; rather, Paper House is alleging infringement of the general
format of its entire line of die-cut greeting cards.

At the hearing on Paper House's motion for a preliminary injunction, Paper
House's president, Jeffrey Milstein, acknowledged that other greeting card
companies have either marketed die-cut [**4]  cards or used photographic
images, but he asserted that his company was the first to produce a line
of greeting cards that applied the die-cutting process to photographs.

Relying on the two-part test of trade dress infringement applied in Two 
Pesos, Inc. v. Taco Cabana, Inc., 120 L. Ed. 2d 615, 112 S. Ct. 2753, 2758
(1992), and Paddington Corp. v. Attiki Importers & Distributors, Inc.,
996 F.2d 577, 582 (2d Cir. 1993), the District Court concluded that Paper
House had shown neither distinctiveness of its trade dress nor likelihood
of consumer confusion.

As the District Court noted, Paper House described its trade dress as
"straight-on color photographs of animals, plants, people or objects,
die-cut of the shape of the image of the photograph, with the inside of 
the card being a blank white color." Jeffrey Milstein, Inc. v. Gregor,
Lawlor, Roth, Inc., No. 94 Civ. 8003 (KTD), mem. dec. at 4 (S.D.N.Y.
Dec. 12, 1994) ("Dist. Ct. Op.").  Evaluating these characteristics for
distinctiveness, the District Court determined that Paper House's trade
dress was "generic," id. at 5, consisting solely of common and functional
elements such as die-cutting, photographs, and blank white interiors. The
District Court also found that Paper House had not demonstrated that its
dress had acquired a secondary meaning.

With respect to the likelihood of confusion, the District Court applied the
eight-factor test set forth in Polaroid Corp. v. Polarad Electronics Corp.,
287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961), and
concluded that the only factors favoring Paper House were
"proximity/bridging the gap" and the relative lack of sophistication
among consumers of greeting cards. Dist. Ct. Op. at 7.

As to the other factors, the District Court found that Paper House's trade
dress was weak at best, and any similarity between the two brands of greeting
cards could be explained by "the fact that Plaintiff's and Defendant's
products depict similar natural objects, die-cut to form." Id. at 7-8.
The District Court found no support for Paper House's allegations of
deliberate copying, {n1} and it found no evidence of actual confusion. In
addition, the District Court noted that a visual inspection of Paper House's
and Triangle's greeting cards failed to disclose an appreciable disparity
in quality. Because Paper House had not satisfied the standard for trade
dress infringement, the District Court found, Paper House could not show
a likelihood of success on the merits of its Lanham Act claim. Moreover,
in light of plaintiff's failure to prove either actual or likely confusion
as to source, the District Court ruled that Paper House also had not shown
a likelihood of success on the merits of its unfair competition claim.
Finally, the District Court concluded that Paper House had not established
that it would suffer irreparable harm in the event that the preliminary
injunction was not granted, or that the balance of hardships tipped in
its favor. Accordingly, the District Court denied Paper House's motion.


A. Standard of Review

A party seeking a preliminary [**7]  injunction must demonstrate (1)
irreparable harm should the injunction not be granted, and (2) either
(a) a likelihood of success on the merits, or (b) sufficiently serious
questions going to the merits and a balance of hardships tipping decidedly
in the movant's favor. See King v. Innovation Books, 976 F.2d 824, 828
(2d Cir. 1992). In the trade dress context, a showing of likelihood of
confusion as to source will establish a risk of irreparable harm. See
LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 79 (2d Cir. 1985). We
review a decision denying a preliminary injunction "for an abuse of
discretion which, when found, usually consists of the application of
an incorrect legal standard or the reliance on clearly erroneous findings
of fact." Chemical Bank v. Haseotes, 13 F.3d 569, 573 (2d Cir. 1994).

B. Lanham Act Claim

Section 43(a) of the Lanham Act, "though enacted as part of the Trademark
Act, . . . functions as a federal law of unfair competition for unregistered
goods . . [and] extends protection to a product's 'trade dress.'" Coach 
Leatherware Co., v. AnnTaylor Inc., 933 F.2d 162, 168 (2d Cir. 1991). It
provides a cause of action against any person who "in connection with any
goods . . . or any container for goods, uses in commerce any word, term,
name, symbol, or device, or any combination thereof . . . which . . . is
likely to cause confusion, or to cause mistake, or to deceive . . . as to
the origin, sponsorship, or approval of his or her goods . . . by another
person." 15 U.S.C. Section 1125(a) (1988).

At one time, "trade dress" referred only to the manner in which a product
was "dressed up" to go to market with a label, package, display card, and
similar packaging elements. However, "trade dress" has taken on a more
expansive meaning and includes the design and appearance of the product
as well as that of the container and all elements making up the total
visual image by which the product is presented to customers. See
LeSportsac, 754 F.2d at 75. Thus, trade dress is "essentially [a product's]
total image and overall appearance", Two Pesos, 112 S. Ct. at 2755 n.1,
"as defined by its overall composition and design, including size, shape,
color, texture, and graphics." AnnTaylor, 933 F.2d at 168. To prevail in
an action for trade dress infringement under section 43(a) of the Lanham
Act, a plaintiff must prove (1) that its dress is distinctive and (2)
that a likelihood of confusion exists between its product and the
defendant's product. See Two Pesos, 120 L. Ed. 2d 615, 112 S. Ct. 2753,
2758; Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033,
1038-39 (2d Cir. 1992). However, functional packaging and product designs
are unprotected, and the functionality of a design may be raised as a
defense to an action for trade dress infringement. See LeSportsac,
754 F.2d at 75-76.

(1) Distinctiveness. We evaluate the distinctiveness of trade dresses
according to the test set forth by Judge Friendly in Abercrombie & Fitch
Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). See Paddington,
996 F.2d at 583. Under this test, dresses are classified as either:
(1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary or
fanciful. See Abercrombie, 537 F.2d at 9. Suggestive and arbitrary or
fanciful trade dresses are considered to be inherently distinctive,
and therefore always satisfy the first prong of the test for trade dress
protection. If a dress is descriptive, however, the plaintiff must
establish that it has acquired secondary meaning in order to become
distinctive. {n2}  See Two Pesos, 112 S. Ct. at 2757-58. Generic dresses
-- "those that 'refer to the genus of which the particular product is
a species' " -- are never protectable. Id. at 2757 (quoting Park'N Fly,
Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194 (1985)).

Although each element of a trade dress individually might not be inherently
distinctive, it is the combination of elements that should be the focus of
the distinctiveness inquiry. Thus, if the overall dress is arbitrary,
fanciful, or suggestive, it is distinctive despite its incorporation of
generic elements. Cf. LeSportsac, 754 F.2d at 76 (despite functionality
of individual elements, bag was nonfunctional "when viewed in its entirety").
{n3}  Nonetheless, the fact that a trade dress is composed exclusively of
commonly used or functional elements might suggest that that dress should
be regarded as unprotectable or "generic", to avoid tying up a product or
marketing idea. Cf.  Stormy Clime, 809 F.2d at 978 (referring to risk of
monopolization of market where trade dress consists of "arrangement of
predominantly functional features").

In evaluating claims to distinctive trade dresses, two additional
considerations should be borne in mind. First, although trade dress law
may supplement copyright and patent law by protecting unpatentable product
configurations and novel marketing techniques, see, e.g., LeSportsac,
754 F.2d at 76-77, 79 (luggage design), overextension of trade dress
protection can undermine restrictions in copyright and patent law that
are designed to avoid monopolization of products and ideas. Consequently,
courts should proceed with caution in assessing claims to unregistered
trade dress protection so as not to undermine the objectives of these
other laws. See Stormy Clime, 809 F.2d at 977-78 (noting that although
patent laws "bestow[] limited periods of protection" to designs, "trademark
protection extends for an unlimited period").

Second, just as copyright law does not protect ideas but only their concrete
expression, neither does trade dress law protect an idea, a concept, or a
generalized type of appearance. See, e.g., Hartford House Ltd. v. Hallmark
Cards Inc., 846 F.2d 1268, 1274 (10th Cir.) ("Blue Mountain has not been
granted exclusive rights in an artistic style or in some concept, idea,
or theme of expression. Rather, it is Blue Mountain's specific artistic
expression, in combination with other features to produce an overall
Blue Mountain look, that is being protected."), cert. denied, 488 U.S. 908
(1988); Fashion Victim, Ltd. v. Sunrise Turquoise, Inc., 785 F. Supp. 1302,
1308 (N.D. Ill. 1992). Examples of ideas or concepts too general to warrant
protection are the "theme" of skeletons engaging in sexual activities, which
plaintiff used in its t-shirt design, see Fashion Victim, 785 F. Supp. at
1308, and the "generalized concept" of grotesque figures in toys, see Those
Characters From Cleveland, Inc. v. J.J. Gams, Inc., No. 86 Civ. 3180,
1992 U.S. Dist. LEXIS 8424, *13, 1992 WL 135580, at *5 (S.D.N.Y. Apr. 12,
1992).  By contrast, the concrete expression of an idea in a trade dress
has received protection. See Hartford House, 846 F.2d at 1269, 1274
("specific artistic expression" consisting of "non-occasion emotional
messages concerning love, personal relationships, and other similar
subjects, superimposed on watercolor or airbrush artwork that generally
had a landscape motif or nature theme"); Roulo v. Berrie, 886 F.2d 931,
935 (7th Cir. 1989) (dress consisted of "beige, single-face (no fold)
cards containing sentimental verses and frequently using ellipses written
in Roulo's handwriting with brown ink"; "flanking the messages on the
left and right borders [were] a series of four stripes, two silver foil
stripes, enveloping one brown and one colored stripe in the middle"),
cert. denied, 493 U.S. 1075 (1990).

Drawing the line between "ideas" or "concepts" on the one hand and
"concrete expressions" on the other may sometimes present close
questions. Often a helpful consideration will be the purpose of trade
dress law: to protect an owner of a dress in informing the public of
the source of its products, without permitting the owner to exclude
competition from functionally similar products. The line-drawing task
is analytically no different than applying Learned Hand's "abstractions"
test in the Copyright field, see Nichols v. Universal Pictures  Corp.,
45 F.2d 119, 121 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931), to
distinguish an unprotectable idea from a protectable expression of the
idea. The level of generality at which a trade dress is described, as
well as the fact that a similar trade dress is already being used by
manufacturers of other kinds of products, may indicate that that dress
is no more than a concept or idea to be applied to particular products.

In this case, Paper House alleges that its trade dress comprises
"straight-on, strong photographic, glossy images of animals, persons
or objects on die cut cards that are cut without bleed of any kind."
Appellant's Reply Brief at 6-7.  Paper House also appears to include
in its dress the blank interior of the cards, as well as the cellophane
wrapping in which they are packaged. Paper House asserts that its card
design is unique because the other die-cut cards have an "antique"
look, are not glossy, are not completely die-cut, or are made from
drawings rather than from photographs.

Despite its initial novelty within the greeting card industry, however, Paper
House's trade dress cannot qualify for trade dress protection because Paper
House is effectively seeking protection for an idea or concept -- die-cut
photographic greeting cards. It is clear that the first manufacturer to
create a die-cut photographic product could not have claimed trade dress
protection for all die-cut photographic designs, since a trade dress
described as consisting solely of die-cut photographs would simply
"'refer to the genus of which the particular product is a species.'"
Two Pesos, 112 S. Ct. at 2757 (quoting Park ' N Fly, 469 U.S. at 194).

That Paper House seeks trade dress protection only in the greeting card
industry, and not with respect to all die-cut photographic products, does
not alter our conclusion. Just as the first company to depict a heart and
an arrow on Valentine's cards or to produce cards depicting tabby cats
could not seek protection for those designs because they are concepts,
defined abstractly, so Paper House cannot obtain protection for its
general idea of creating cards out of die-cut photographs. {n4}

Moreover, although Paper House argues that when it decided to apply the
die-cutting technique to photographic greeting cards, a unique image resulted,
Paper House's trade dress is more properly viewed as a refinement on the
die-cut greeting card design. Cf.  Paddington, 996 F.2d at 583 ("where it
is the custom of an industry to package products in a particular manner,
a trade dress in that style would be generic and therefore not inherently

In sum, we agree with the District Court that Paper House is seeking trade
dress protection for a generalized idea -- one that has been applied, and
has many applications, to products outside the greeting card context,
including, for example, Triangle's die-cut photographic bags.

Since the features of Paper House's trade dress for which it seeks
protection can be considered "generic", even a showing of secondary
meaning could not make that dress "distinctive".  See Two Pesos, 112 S. Ct.
at 2757. In any event, Judge Duffy's determination of the secondary
meaning issue was proper. Secondary meaning suggests that, with time
and market exposure, a trade dress may come to identify not only goods,
but also the source of the goods.  See George Basch Co., Inc. v. Blue
Coral, Inc., 968 F.2d 1532, 1536 (2d Cir.), cert. denied, 121 L. Ed. 2d
445, 113 S. Ct. 510 (1992). Paper House presented a number of articles
in industry and trade publications discussing its greeting card product
line, but provided no consumer survey or other evidence suggesting that
its trade dress identified the source of the product. Based on this limited
evidence, the District Court's finding as to lack of secondary meaning
was not clearly erroneous.

(2) Likelihood of Confusion. As the District Court recognized, it could
properly have denied injunctive relief on the basis of Paper House's
failure to prove the distinctiveness, and thus protectability, of its
trade dress.  Nevertheless, the District Court went on to consider the
issue of whether Paper House had met the second part of the Two Pesos
test by demonstrating a likelihood of confusion. We briefly review the
District Court's findings on this issue because of their relevance to
our evaluation of the unfair competition claim.

In evaluating likelihood of confusion, we are guided by the non-exclusive
factors set forth by Judge Friendly in Polaroid, 287 F.2d at 495.  See 
Paddington, 996 F.2d at 583 (applying Polaroid factors to trade dress claim).
These factors are: (1) the strength of plaintiff's dress; (2) the similarity
between the two dresses; (3) the proximity of the products in the marketplace;
(4) the likelihood that the prior owner will bridge the gap between the
products; (5) evidence of actual confusion; (6) defendant's bad faith; (7)
the quality of defendant's product; and (8) the sophistication of the relevant
consumer group. We review the District Court's determination of each Polaroid
factor under a clearly erroneous standard, but the ultimate evaluation of
likelihood of confusion, which is based on a weighing of the factors,
we review de novo.  Id. at 584-85.

We find no error in the District Court's factual determinations regarding
the weakness of Paper House's dress, the similarity of Paper House's and
Triangle's greeting card designs, the competitive proximity of the two
brands of greeting cards, the issue of bridging the gap (which adds no
weight here, since Paper House and Triangle are selling similar products
in the same market, and there is no gap to bridge), the lack of evidence
of actual confusion or bad faith copying on Triangle's part, the comparable
quality of Paper House's and Triangle's cards, and the relative lack of
sophistication of consumers. When these factors are weighed together, it
is apparent -- particularly in view of the weakness of Paper House's trade
dress, the absence of bad faith on Triangle's part, and the absence of
actual confusion -- that the balance favors Triangle.  Thus, Paper House
has not shown a likelihood of confusion, the second part of the Two Pesos

C. Common Law Unfair Competition Claim

In addition to the statutory claim discussed above, Paper House also brought
a common law cause of action for unfair competition. "The essence of unfair
competition under New York common law is 'the bad faith misappropriation of
the labors and expenditures of another, likely to cause confusion or to
deceive purchasers as to the origin of the goods.'" Rosenfeld v. W.B.
Saunders, A Division of Harcourt Brace Jovanovich, Inc., 728 F. Supp.
236, 249-50 (S.D.N.Y.) (quoting Computer Assocs. Int'l, Inc. v. Computer
Automation, Inc., 678 F. Supp. 424, 429 (S.D.N.Y. 1987)), aff'd, 923 F.2d
845 (2d Cir. 1990). In a common law unfair competition claim under New York
law, the plaintiff must show either actual confusion in an action for
damages or a likelihood of confusion in an action for equitable relief.
See W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 576 (2d Cir.
1993) (citation omitted). Additionally, there must be some showing of
bad faith. See Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044
(2d Cir. 1980). Because Paper House failed to prove actual or likely
confusion, or Triangle's bad faith, the District Court correctly
concluded that Paper House did not show a likelihood of success on
the merits in connection with this claim.

D. Other Requirements for Preliminary Injunction

Since Paper House provided no factual evidence of injury, provided no proof
of copying by Triangle, and failed to establish actual confusion or a
likelihood of confusion, a risk of irreparable harm has not been demonstrated.

Moreover, Paper House not only failed to show a likelihood of success on the
merits; it did not even raise serious questions going to the merits, because
Paper House's alleged trade dress lacks distinctiveness and Paper House did
not present facts sufficient to establish a likelihood of confusion.
Furthermore, the balance of hardships tips in Triangle's favor, because
Paper House seeks to enjoin an entire product line, which, if ordered by
the District Court, would cause Triangle considerable hardship far
outweighing any speculative possibility that Paper House's goods
would be harmed by consumer confusion.


The District Court did not exceed its discretion in denying the motion
for preliminary relief. Accordingly, the order is affirmed.


{n1}  Though Paper House argued that Triangle was aware of Paper House's
line of cards, Triangle denied copying and provided evidence indicating
that at least some of the images used on its cards were previously
reproduced on other Triangle merchandise.

{n2}  Paper House asserts that the District Court erroneously required
Paper House to prove secondary meaning sufficient for a finding of
distinctiveness.  Prior to the Supreme Court's decision in Two Pesos,
this Circuit required a plaintiff seeking section 43(a) protection of
a trade dress to establish distinctiveness by proving secondary meaning.
See Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 974 (2d Cir. 1987).
The Supreme Court specifically rejected this approach. See Two Pesos,
112 S. Ct. at 2760. However, as the record shows, the District Court
reviewed the issue of secondary meaning only after ruling that Paper
House's greeting cards lacked inherent distinctiveness and were "generic".

{n3}  Paper House asserts that the District Court improperly evaluated the
individual features of Paper House's trade dress in isolation rather than
in combination. However, in determining that Paper House's dress was not
distinctive, the District Court stated that it was "examining each card in
its entirety" and "taking these individual generic components as a whole".
Dist. Ct. Op. at 5. Therefore, Paper House's objection is without merit.

{n4} As the District Court below correctly perceived, since the photographs
Paper House uses vary from card to card, only the use of die cutting and
the depiction of photographs remain constant. In addition, Paper House also
consistently uses blank white interiors as well as cellophane wrapping,
but, as the District Court suggested, such "functional" elements do not
increase the distinctiveness of the trade dress, even considered as a whole.