Full opinion text
MEMORANDUM OPINION AND ORDER I. INTRODUCTION ROVNER, District Judge. Plaintiff Eldon Industries, Inc. (“Eldon”) is engaged in the business of designing, manufacturing and selling office accessories. Defendants Rubbermaid, Inc. and its subsidiary Rubbermaid Commercial Products, Inc. (collectively, “Rubbermaid”) are also in the business of designing, manufacturing and selling office accessories. In this action, Eldon alleges that Rubbermaid is liable for trademark infringement and unfair competition in connection with Rubbermaid’s manufacture and sale of various office supplies which are similar to office supplies manufactured and sold by Eldon. Rubbermaid has filed counterclaims which seek, among other relief, cancellation of trademarks registered by Eldon on the Supplemental Register and other relief. Pending before the Court are objections to the Magistrate’s Reports and Recommendations concerning plaintiff’s motion for a preliminary injunction and defendants’ motion for partial summary judgment. II. FACTS This case centers around three lines of products produced by Eldon: the Stackable line of office trays (see Figure 1); the Add-A-File vertical sorters (see Figure 2); and the Image 1500 line of office trays (see Figure 3). Count I alleges that Rubbermaid’s QuickStack trays (see Figure 4) infringe Eldon’s trademark rights in the Stackable line in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114. Count II alleges that Rubbermaid’s QuickSnap sorters (see Figure 5) infringe Eldon’s trademark rights in the Add-A-File line in violation of § 32. Counts III and IV allege that production and sales of the QuickStack trays and QuickSnap sorters, respectively, constitute unfair competition under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Counts V and VI allege that Rubbermaid’s production and sales of the Form 1000 trays (see Figure 6), and the risers for stacking those trays, constitute unfair competition in violation of § 43(a). The Magistrate has provided 135 recommended findings of fact in her Report and Recommendation on Eldon’s motion for a preliminary injunction. Those findings are extremely thorough and detailed. Although Eldon asserts that the Report “includes clearly erroneous and incomplete findings of fact,” Eldon identifies very few specific findings of fact with which it takes issue. Those findings are relatively minor and will be addressed where necessary in the context of the Court’s discussion of the legal issues. Other than any findings which are rejected in that discussion, the Court adopts the Magistrate’s findings of fact. III. PARTIAL SUMMARY JUDGMENT A. Counts III and IV Rubbermaid moved for summary judgment with respect to Counts III and IV, the unfair competition counts concerning the Stackable trays and the Add-A-File, on the ground that the trade dress of neither product had acquired a secondary meaning prior to the introduction of Rubbermaid’s competing products. Rubbermaid argued both that Eldon had failed to establish secondary meaning and that by placing its mark on the Supplemental Register, Eldon conceded that its products had not attained secondary meaning. The Magistrate rejected both of Rubbermaid’s arguments and concluded that there is a triable issue of material fact with respect to secondary meaning. Rubbermaid has not objected to this portion of the Report and Recommendation. Accordingly, the Court adopts the Magistrate’s recommendation with respect to Counts III and IV and denies Rubbermaid’s motion for summary judgment on those counts. B. Counts I and II and Rubbermaid’s Counterclaim With respect to Counts I and II, the trademark infringement counts concerning the Stackable trays and the Add-A-File, Rubbermaid argued that Eldon’s claims must fail because Eldon’s trademarks are invalid. Specifically, Rubbermaid argued that Eldon had not satisfied the requirement of § 23 of the Lanham Act, 15 U.S.C. § 1091, that registration on the Supplemental Register is appropriate only if the mark was “in lawful use in commerce by the proprietor thereof, upon or in connection with any goods or services for the year preceding the filing of the application.” For the same reason, Rubbermaid moved for summary judgment in its favor on its counterclaims for cancellation of Eldon’s trademark registrations for these products. 1. Retroactivity of Amendment Before the merits of the Magistrate’s Report may be reached, the Court must consider the retroactivity of an amendment to the Lanham Act which became effective during the pendency of Eldon’s objections. In order to address this issue, the Court must review chronologically a portion of the Lanham Act’s history. The Lanham Act was originally passed in 1946. Section 46(a) of the Act, the enabling section, provided, in part: “This act shall be in force and take effect one year from its enactment, but except as otherwise herein specifically provided shall not affect any suit, proceeding, or appeal then pending____” In Hygienic Product Co. v. Judson Dun-away Corp. 81 F.Supp. 935, 947 (D.N.H. 1948), rev’d on other grounds, 178 F.2d 461 (1st Cir.1949), cert. denied, 339 U.S. 948, 70 S.Ct. 802, 94 L.Ed. 1362 (1950), the court gave effect to § 46(a) and denied a request to apply the Lanham Act to a lawsuit which had been filed on May 31, 1947, over one month before the effective date of the Lanham Act. See also Magic Foam Sales Corp. v. Mystic Foam Corp., 167 F.2d 88, 90 (6th Cir.1948); King Kuy Candies, Inc. v. H.B. Reese Candy Co., 140 F.Supp. 115 (M.D.Pa.1956). In 1975, § 35 of the Lanham Act, 15 U.S.C. § 1117, was amended to provide for recovery of attorneys’ fees in exceptional cases. Section 4 of the Act which effected this amendment provided that the amendment did not affect any pending suit, proceeding or appeal. In Five Platters, Inc. v. Purdie, 419 F.Supp. 372 (D.Md.1976), the court held that the amendment to § 35 did not apply to a lawsuit which had been instituted in 1973. In 1988, Congress passed the Trademark Law Revision Act of 1988, which is in issue here. Section 121 of the 1988 Act amended § 23 of the Lanham Act to eliminate the one year requirement, by deleting the bracketed material in the following passage: All marks capable of distinguishing applicant’s goods or services and not registrable on the principal register ... which have been in lawful use in commerce by the proprietor thereof, upon or in connection with any goods or services [for the year preceding the filing of the application] may be registered on the supplemental register____ Section 136 of the 1988 Act provides: “This title and the amendments made by this title shall become effective on the date which is one year after the date of enactment of this Act.” The Act was enacted on November 16, 1988, and it became effective November 16, 1989. The Magistrate found that Rubbermaid was entitled to summary judgment on Counts I and II of thé complaint and on Rubbermaid’s counterclaims because Eldon had not enjoyed exclusive use of the alleged trademark for the relevant one year period. This analysis necessarily rested on the one year provision which was dropped by the 1988 amendment. The parties dispute whether the 1988 amendment applies to this pre-existing lawsuit. Eldon brought the amendment to the Court’s attention by filing, with leave of Court, supplemental objections to the Magistrate’s Report. Eldon primarily relies on the principle of Bradley v. School Board of City of Richmond, 416 U.S. 696, 711, 94 S.Ct. 2006, 2016, 40 L.Ed.2d 476 (1974), that “a Court is to apply the law in effect at the time it renders its decision, unless doing so would result in manifest injustice or there is a statutory direction or legislative history to the contrary.” Eldon states that in this case there is no such manifest injustice or statutory or legislative history forbidding retroactive application, and that the 1988 amendment should therefore govern. Rubbermaid has responded by relying on § 46 of the Lanham Act, which provides that the act does not apply retroactively, and by moving for sanctions pursuant to Fed.R.Civ.P. 11 and 28 U.S.C. § 1927. Rubbermaid argues that pursuant to § 46, Lanham Act amendments do not apply to pending litigation. Rubbermaid cites Five Platters, supra, King Kup, supra, and Hygienic Product, supra, in support of this proposition. Eldon replies by arguing that Rubbermaid’s motion for sanctions is not well grounded and is itself sanctionable. Eldon further argues that § 46 applied only to the 1946 Act and does not apply to subsequent amendments. Rubbermaid counters that the 1988 Act re-enacted the 1946 Act, including § 46. The Court agrees with the position advanced by Eldon. Section 46 of the 1946 Act was merely the enabling provision. It was not codified, and by its terms it refers only to the 1946 Act itself. With the exception of Five Platters, the cases relied on by Rubbermaid concern the application of the 1946 Act itself to pending litigation, and they are thus inapplicable to the present dispute concerning the 1988 amendment. In Five Platters, the court refused to apply to pending litigation an amendment which provided, by that amendment’s own terms, that it was not to be applied to pending litigation. The 1988 amendment, in contrast to the 1975 amendment at issue in Five Platters, does not contain such a provision. It does contain an effective date provision of its own, where a prohibition of retroactive application could have been inserted. As demonstrated by the 1975 amendment, Congress knew how to draft such a provision if it so intended. Rubbermaid contends that the 1988 Act is unlike the 1975 Act because the 1975 Act amended only a minor portion of the Lanham Act whereas the 1988 Act dramatically restructured the entire Act. Rubbermaid argues that the 1988 Act “specifically incorporated” § 46 of the 1946 Act, but Rubbermaid offers no authority for this proposition. The 1988 Act describes itself as “An Act to amend the Act entitled ‘An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes.’ ” It is not entitled “An Act to re-enact, etc.” It contains no provision adopting, amending, or in any way referring to § 46 of the 1946 Act. On the contrary, it contains its own enabling section, § 136, which serves the same function as § 46 but omits any reference to pending litigation. The Court cannot agree that the 1988 Act re-enacted, rather than amended, the 1946 Act. Section 46 applies only to the 1946 Act itself. The Court can only conclude that the 1988 Act’s silence, especially in light of Congress’ demonstrated ability to prohibit retroactive application when it so desires, evinces an intent that the 1988 Act apply to pending litigation, in accord with the default principle of retroactive application as described in Bradley. Because the Court finds that the one year provision, which was eliminated by the 1988 Act, does not apply to this case, the Court concludes that Rubbermaid’s motion for summary judgment on its counterclaims and on Counts I and II of Eldon’s complaint must be denied. 2. Sanctions In unpublished opinions, this Court has often expressed its dismay with the excessive amount of time that it has been forced to devote to motions for sanctions, which consume resources that could be expended more productively on the merits and which inevitably seem to invite cross-motions for sanctions. Although Fed.R.Civ.P. 11 has its place, and there are certainly eases where sanctions are warranted, motions for sanctions have often become simply another weapon in the arsenal of hardball litigators who wish to burden opponents and the judicial system with every accusation possible. Although the requests for sanctions in this case are regrettable, ruling on them is a simple task given the Court’s conclusion above that the amendment to the Lanham Act is retroactive. ' Because Eldon’s position on retroactivity is correct, its supplemental objections did not violate Rule 11 or § 1927. Rubbermaid’s motion for sanctions based on Eldon’s supplemental objections must therefore be denied. Furthermore, because Eldon’s supplemental objections were not only well-grounded but were actually correct on the merits, the Court believes it has no choice but to conclude that Rubbermaid’s motion for sanctions itself violated Rule 11. A motion for sanctions can hardly be well grounded where it challenges arguments which the Court upholds. However, Eldon cannot have incurred substantial attorneys’ fees and costs in responding to the motion for sanctions, because Eldon needed do no more in response than it was already doing to file its reply memorandum on the merits of the retroactivity issue. Accordingly, the Court will impose on Rubbermaid nominal sanctions of $200 payable to Eldon. IV. MOTION FOR PRELIMINARY INJUNCTION Eldon moved for a preliminary injunction to enjoin the manufacture, advertisement and sale of Rubbermaid’s competing products on the ground that Rubbermaid’s products infringed on the trade dress used in Eldon’s products. In determining whether a preliminary injunction is warranted, the Court must consider: (1) whether the plaintiff has an adequate remedy at law; (2) whether the plaintiff will suffer irreparable harm if the injunction is not granted and whether this harm is greater than any irreparable harm to defendant if the injunction is granted; (3) whether the plaintiff has some likelihood of success on the merits and how likely that success is “because this affects the balance of harms” between the parties; and (4) the consequences of an order granting or denying a motion for preliminary injunction on the public interest. Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1181 (7th Cir.1989). The Magistrate concluded Eldon had not shown that any of these factors supported its position and that a preliminary injunction should therefore not enter. A. Likelihood of Success The most significant part of the Magistrate’s analysis was her consideration of the likelihood of success on the merits. As the Magistrate noted (Report I at 40), the tests for prevailing on the infringement claims and the unfair competition claims are essentially the same. Eldon must establish either that its trade dress has acquired secondary meaning or that its trade dress is a distinctive, identifying mark. Eldon must also establish that consumers are likely to be confused as to the source of the product because of the products’ similar appearances. Finally, Eldon cannot prevail if the trade dress is determined to be functional. See Schwinn, 870 F.2d at 1182-83 (reversing grant of a preliminary injunction in unfair competition case). See also Roulo v. Russ Berrie & Co., 886 F.2d 931, 935 (7th Cir.1989). In this case, there is no contention that the trade dress is a distinctive, identifying mark. Accordingly, a finding of infringement initially turns on a determination that Eldon’s trade dress has acquired secondary meaning and that there is a likelihood of consumer confusion. 1. Stackable and Add-A-File a. Secondary Meaning. Whether a trade dress has acquired a secondary meaning is a question of fact. Vaughan Mfg. Co. v. Brikam International, Inc., 814 F.2d 346, 349 (7th Cir.1987). As the Magistrate noted (Report I at 43), a number of factors must be weighed in determining whether a trade dress has acquired secondary meaning. In Eldon’s favor, the Magistrate found that Eldon dominated the market; that it spent considerable funds on advertising and promotion; that it enjoyed substantial revenues; that it had a long period of exclusive use (due to a patent which has since expired); and that Rubbermaid intentionally copied Eldon’s products. In favor of Rubbermaid, the Magistrate found that the design was a simple geometric pattern; that there was little evidence (e.g., survey evidence) that consumers actually associated this pattern with a single source; that the advertising did not specifically emphasize the ribbed pattern; and that there was no evidence that Rubbermaid’s intent was to confuse consumers. The Magistrate concluded that Eldon had presented sufficient evidence of secondary meaning to create a triable issue of fact, but not enough to show a likelihood of success. Eldon raises a number of objections to the Magistrate’s analysis of the secondary meaning issue. First, Eldon argues that the Magistrate placed insufficient emphasis on the fact that Rubbermaid intentionally copied elements of Eldon’s trade dress. However, although such evidence is probative, it is not conclusive. Vaughan, 814 F.2d at 349; Keystone Camera Products Corp. v. Ansco Photo-Optical Products Corp., 667 F.Supp. 1221, 1231 (N.D.Ill. 1987). The Magistrate found that Rubbermaid had intentionally copied elements of Eldon’s design, but not with the intent to confuse consumers. (Report I at 47.) She properly considered these findings as factors in her overall analysis. Eldon further objects that the Magistrate placed excessive emphasis on the lack of any survey evidence indicating actual consumer confusion. As Eldon correctly states, such survey evidence is not required in order to demonstrate secondary meaning. Vaughan, 814 F.2d at 349; A.J. Canfield Co. v. Vess Beverages, Inc., 796 F.2d 903, 908 (7th Cir.1986). The Magistrate, however, recognized this principle. She did not treat the absence of such evidence as conclusive, but rather considered it as part of her analysis. (Report at 46.) Most importantly, Eldon objects that the Magistrate improperly considered the factors in isolation rather than weighing them in their totality, or that she erroneously assumed that every factor must be present in order to establish secondary meaning. On the contrary, it is Eldon, not the Magistrate, which urges an overly simplistic approach toward the secondary meaning. Rather than merely taking each factor in isolation, deciding which party “won” on that factor, and then deciding in favor of the party that won on the most factors, the Magistrate considered all of the factors together in reaching her conclusion. The Court finds it unnecessary to review here all of the Magistrate’s analysis. The Magistrate found, after considering the evidence as a whole, that Eldon had not demonstrated that it was likely to prove secondary meaning, and the Court agrees with and adopts both the Magistrate’s reasoning and her conclusion. b. Likelihood of Confusion. With respect to the likelihood of consumer confusion, again a number of factors must be weighed. See Roulo, 886 F.2d at 937; Schwinn, 870 F.2d at 1185. The Magistrate found that some factors favored Eldon and other factors favored Rubbermaid. In favor of Eldon, she found that the advertising media employed are similar, that the distribution channels are similar, that the products are similar, that the trade dresses are similar, and that Rubbermaid intended to copy Eldon’s design. In favor of Rubbermaid, she found that the trade dress is not distinctive and that there is little evidence of actual confusion. She also emphasized that the Eldon and Rubbermaid logos are prominently displayed in the catalogues from which most sales are made and that the products’ packages also are clearly labelled with the companies’ logos. She found that there was no possibility of consumer confusion at the time of the sale. She did find that there was some chance of confusion after the sale, but that even this possibility was minimized because the companies’ names are molded into the bottoms of the products and because there are subtle differences between the products which are visible upon close inspection. Eldon’s objections with respect to the likelihood of confusion are similar to the objections described above with respect to secondary meaning. Eldon argues that the Magistrate overemphasized the lack of any evidence of actual confusion and emphasizes that such evidence is not required in order to show a likelihood of confusion. See Schwinn, 870 F.2d at 1187. However, the Magistrate did not treat the lack of such evidence as conclusive in itself. She gave it appropriate weight along with the other evidence. In her summary of the evidence which she viewed as particularly significant, she did not even mention it, emphasizing instead that most sales of both products occurred through office products catalogs, that the names and logos of the manufacturers are clearly displayed alongside the products in those catalogs, and that both companies’ products are clearly labelled with large, distinctive labels. (Report I at 53.) Eldon also contends that the Magistrate erred in finding that the trade dress is not distinctive. Eldon oversimplifies the Magistrate’s finding by saying that she found the trade dress not distinctive merely because it employs common geometric shapes. The Magistrate stated that not only are the elements of the trade dress common, but that nothing about “any one of them or their overall configuration suggests that the design functions as a trademark.” (Report I at 50.) The Court agrees that the design, although it does “appear to combine common, simple elements in a very pleasing form” (Report at 50), is not particularly distinctive. As with the secondary meaning issue, Eldon argues that the Magistrate failed to consider the various factors in their totality. However, the fact that a greater number of factors may have pointed in Eldon’s favor is not determinative: The weight and totality of the most important factors in each case will ultimately be determinative of the likelihood of confusion, not whether the majority of the factors tilt the scale in favor of one side or the other. Schwinn, 870 F.2d at 1187. Thus the importance of each factor depends on the circumstances of each case. Here, the Magistrate properly weighed all of the evidence and factors as a whole in determining that Eldon had not demonstrated a likelihood of confusion. The Court agrees with that conclusion and adopts the Magistrate’s reasoning. 2. Image 1500 The Magistrate found that the evidence of secondary meaning with respect to Eldon’s Image 1500 line was considerably weaker than the evidence relating to the Stackable and Add-A-File lines, and she did not reach the issue of likelihood of confusion. She found that the Image 1500 line is somewhat distinct from competitors because of its grace and elegance, but that the basic elements of its design had been used previously by a number of other manufacturers. She found no evidence that consumers view the design as a source identifier or that the design is sufficiently distinct to support a secondary meaning. (Report I at 61-62.) Eldon objects that the Magistrate did not address the stacking supports, as opposed to the trays themselves, and that the Magistrate placed insufficient emphasis on the distinctive attractiveness of the design of the Image 1500 line. The first objection is a minor point which would not alter the Magistrate’s analysis. The second objection is similarly without merit; the Magistrate stated that it was not enough that the Eldon product be more attractive than similar competing products, and the Court agrees. The Court adopts the Magistrate's reasoning and her conclusion that Eldon has not demonstrated a likelihood of success with respect to the Image 1500 line. B. Irreparable Harm Eldon argues that the Magistrate erred in concluding that it has not demonstrated that it will suffer an irreparable injury in the absence of a preliminary injunction. Eldon primarily contends that the Magistrate, although giving it pro for-ma recognition, failed to apply the presumption of irreparable harm that exists in trademark infringement cases. See Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d 852, 858 (7th Cir.1982). On the contrary, the Magistrate specifically found that she would have “no difficulty concluding that to the extent consumers are confused, Eldon faces irreparable injury if Rubbermaid is not enjoined.” (Report I at 63.) The Magistrate based her determination that irreparable injury had not been demonstrated primarily on her conclusions concerning the likelihood of success on the merits, along with the fact that Eldon had delayed for several years before filing the lawsuit. Although Eldon does have justifications for those delays (Report I at 63-64), the delays nonetheless tend to undercut Eldon’s position that it will be irreparably injured. The Court agrees with the Magistrate’s analysis of irreparable injury. C. Balance of Harms The Magistrate concluded that Eldon did not establish that the balance of harms is in its favor. Eldon objects to this conclusion, emphasizing that Rubbermaid is a large company, that the products represent only a small part of Rubbermaid’s business, that all of Rubbermaid’s sales are sales which Eldon has lost, that Rubbermaid’s market shares are increasing, and that any injury suffered by Rubbermaid is caused only by its own intentional infringement of Eldon’s trademarks. The Magistrate’s thorough analysis of the balance of harms adequately addresses these concerns. The Court adopts the Magistrate’s reasoning and conclusion on this issue. D. Public Interest Eldon argues that the public interest “demands” injunctive relief in this case. The Magistrate found that although a preliminary injunction would ensure that consumers are not confused, the public interest does not require an injunction in light of the minimal likelihood of such confusion in the first place. (Report I at 75.) The Court agrees with this conclusion. V. CONCLUSION The Magistrate’s Report and Recommendation on defendants’ motion for partial summary judgment is adopted with respect to Counts III and IV of Eldon’s complaint. It is not adopted with respect to Counts I and II of Eldon’s complaint and Rubbermaid’s counterclaims because of the intervening amendment to the Lanham Act. Rubbermaid’s motion for partial summary judgment is denied in all respects. With respect to Eldon’s motion for a preliminary injunction, the Magistrate’s Report and Recommendation is adopted in all respects. Eldon’s motion for a preliminary injunction is denied. APPENDIX A REPORT AND RECOMMENDATION RESPECTING ELDON’S MOTION FOR THE ENTRY OF A PRELIMINARY INJUNCTION TO THE HONORABLE ILANA DIAMOND ROVNER, one of the Judges of the United States District Court for the Northern District of Illinois. This matter is before the court on the motion of plaintiff, Eldon Industries, Inc. (“Eldon”) for a preliminary injunction to enjoin the manufacture, advertisement and sale of eight of defendant Rubbermaid, Inc.’s and defendant Rubbermaid Commercial Products, Inc.’s (referred to collectively as “Rubbermaid” except where otherwise indicated) office accessories which allegedly infringe upon and are confusingly similar to the trade dress of eight of plaintiff’s products. The Eldon products, and the allegedly infringing Rubbermaid products, are set out on the chart which follows: THE ELDON PRODUCTS IN ISSUE AND THE COMPARABLE, ALLEGEDLY INFRINGING RUBBERMAID PRODUCTS ELDON RUBBERMAID Product Identification Number Product Product Identification Number Product (1) 1600 Letter Size “Stackable” Tray 2551 Letter Size “QuickStack” Fil- (2) 1602 Legal Size “Stackable" Tray 2552 ing Tray Legal Size “QuickStack” Filing (3) 1604 EDP Size “Stackable” Tray 2553 Tray EDP Size “QuickStack” Filing ELDON RUBBERMAID Product Identification Number Product Product Identification Number Product (4) 1607 Front Loading Letter Size “Stackable” Tray 2554 Front Loading Letter Size “QuickStack” Filing Tray (5) 1601 “Add-A-File” Vertical Filing System 2555 “QuickSnap” Vertical Filing System (6) 1570 “Image 1500” Letter Tray 2131 “Form 1000” Letter Size Tray (7) 1579 “Image 1500” Legal Letter Tray 2130 “Form 1000” Legal Size Tray (8) 1539 “Image 1500” Stacking Support 2132 “Form 1000” Riser In its six-count complaint Eldon alleges that the eight office accessories of defendants listed above are confusingly similar to Eldon products, and that defendants’ manufacturing, advertising and sale of these products constitute trademark infringement in violation of § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), and unfair competition in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Both defendants have denied the substantive allegations of the complaint and have asserted affirmative defenses. In addition, Rubbermaid Commercial has filed a ten-count counterclaim against Eldon, seeking, among other things, cancellation of Eldon’s Trademark Supplemental Register Nos. 1,403,588 and 1,403,589, several declaratory judgments, and injunctive relief. Following a four-day hearing, the parties submitted briefs and proposed findings of fact. Having reviewed the transcripts, briefs, exhibits, and proposed findings of fact, this court recommends that the district court adopt the proposed findings of fact and conclusions of law set forth below. RECOMMENDED FINDINGS OF FACT The Parties and Jurisdiction 1. Plaintiff Eldon is a Delaware corporation with its principal place of business in Inglewood, California. Its business includes the design, manufacture and sale of office accessories. (Complaint at 1-2, 113.) Robert Silver stein is Eldon’s president and chairman of its board of directors (Tr. 29; PX Eldon 9 at 2). Herbert Rome, a member of Eldon’s board of directors, is its executive vice-president (Tr. 20). Glen Church is the president of Eldon’s Office Products Division (Tr. 169). 2. Defendant Rubbermaid, Inc. is an Ohio corporation with its principal place of business in Wooster, Ohio. Its business includes the manufacture of rubber and plastic products, including office accessories. (Answer and Affirmative Defenses of Defendant Rubbermaid, Inc. at 2, II4.) Stanley C. Gault (“Gault”) is the chairman of Rubbermaid’s board of directors (PX Eldon 11). 3. Defendant Rubbermaid Commercial, one of various subsidiaries of Rubbermaid, Inc., is a Delaware corporation with its principal place of business in Winchester, Virginia. Its business includes the design, manufacture and sale of office accessories (Answer, Affirmative Defenses and Counterclaims of Defendant Rubbermaid Commercial at 2, 114; id. at 12, ¶ 1). Robert Snyder was its president in October 1985 (Tr. 83). The Office Products Group, the division that manufactures the products at issue, is part of Rubbermaid Commercial (Tr. 619). 4. This lawsuit was filed on July 22, 1987. The court has jurisdiction of this action based on 15 U.S.C. § 1121 and 28 U.S.C. § 1338. Eldon moved for a preliminary injunction on February 4, 1988. Eldon's Entry Into the Office Products Marketplace 5. In 1961, Eldon was primarily engaged in the business of manufacturing and marketing plastic toys. It began to design office accessories in 1965. Its first line of office accessories was the 1300 line. Eldon used an outside designer to design the line’s first accessory, the 1370 Letter Tray, and the remainder of the line was designed by Eldon employees (Tr. 25-27, 30). This product is still advertised and sold in the marketplace (Tr. 30; PX Eldon 2 at 6; PX C-6 at 193). Robert Silverstein had authority for the final approval of the design of the 1370 Letter Tray (Tr. 28-29). Herbert Rome, Eldon’s executive vice-president, had the final approval of the design of all products developed after the 1370 Letter Tray (Tr. 28). 6. Eldon’s 1300 line of office accessories had solid plastic sides with wood trim (Tr. 33). 7. In the late 1960’s, Eldon began to develop its 1600 “Stackable” Tray line because of a perceived need for a horizontal sorting system in which trays could be added or removed (a “modular” system) (Tr. 31). Eldon used an outside design firm, E.J.M., to develop the design of this line. Frederick Gordon MacKay (“MacK-ay”) was the E.J.M. principal most closely involved with Eldon in this venture (Tr. 33). 8. The first stackable letter tray manufactured by Eldon was its 1600 Letter Size Stackable Tray. It is a side-loading tray. It contains a vertical rib design extending across approximately two-thirds of the width of the tray’s two side walls; each side wall also contains a rectangular hand-hole (PX Stackable 1). The ribbed design of the tray consists of vertical plastic strips separated by spaces. This type of design is created by a process called “coring” (Tr. 481-482). The floor of the tray, which does not contain ribs, holds paper (Tr. 131; PX Stackable 1). The 1600 Letter Size Stackable Tray was first sold in approximately 1968, and is currently advertised and sold in the marketplace (Tr. 34; PX Eldon 2 at 10). 9. Eldon offered evidence that it chose a cored rib design because of its attractiveness, the visual accessibility of documents it offered and the decrease in material required (Tr. 35; Dep. of MacKay at 20, 26). While the use of a ribbed design created through the coring process reduces the amount of material needed to produce the accessory compared to a solid wall design, it does not necessarily reduce the costs of production (Tr. 137-138). 10. No one has ever told Rome that he or she bought the tray specifically because of the ribs (Tr. 147). The text of the Eldon catalogue advertisements does not mention the cored rib design. The design is visible in the catalogue pictures but is not singled out for emphasis. Eldon has never advertised that the cored rib configuration of the tray is trademarked and has never used the design as a logo (Tr. 149; PX C-5-C-12). 11. Eldon applied for and received design patent No. 220,014 on the design configuration of its Stackable Tray. The patent was effective February 23, 1971, and was valid for 14 years. Herbert Rome and Erland Paulson were listed as co-inventors; Gordon MacKay was not (Tr. 44, 192; DX 31). 12. Sometime in the early 1970’s, Eldon incorporated the cored rib configuration on a new product, the 1604 Super Stackable Tray, which permits sorting and storage of EDP size (data processing) papers and binders. It is a side-loading accessory with hand-holes (Tr. 37; PX Stackable 3; PX Eldon 2 at 10). 13. Sometime in the late 1970’s, Eldon produced the side-loading 1602 Legal Size Stackable Tray; it also incorporates the cored rib design and hand-holes (Tr. 38; PX Stackable 2; PX Eldon 2 at 10). At about the same time, Eldon produced another letter tray with a cored rib design and hand-holes, the 1607 Front-Loading Stackable Tray (Tr. 38; PX Stackable 4; PX Eldon 2 at 10). 14. Eldon’s use of the cored rib configuration continued into the 1980’s. In this period, Eldon manufactured a side-loading printer stand utilizing the design (Tr. 38; PX Stackable 5; PX Eldon 2 at 20). Eldon also produced the 1613 Mobile Printer Cart, a side-loading accessory featuring seven trays. This accessory utilizes the ribbed design, and each side wall contains a hand-hole (PX Stackable 6; PX Eldon 2 at 20). Eldon also manufactured the 1603 Note Rack utilizing the ribbed design (PX Stack-able 9; PX Eldon 2 at 14). 15. From approximately 1970-1973, Mel Evenson was employed by Mitchell Bobrick, Incorporated (“Bobrick”). While Evenson was employed at Bobrick, Eldon was a Bobrick client. While a Bobrick employee, Evenson designed the Eldon “Hot File.” The Hot File mounts on the wall and functions as a receptacle for papers. Evenson did not utilize a ribbed design on this product. He testified that he believed ribs were inappropriate for a product designed to hang on a wall (Tr. 213-214, 259). Sterling Plastics (“Sterling”), at a time not disclosed in this record, manufactured and offered for sale a similar accessory. The Sterling product features a prominent ribbed design, although the ribs are embossed, rather than cored (Tr. 260; DX 6). Evenson at some time saw Sterling’s product at an office product show. At that time, a person whose identity he cannot recall asked Evenson why he had not put ribs on the Eldon Hot File since Eldon was the company that featured ribs on their products. Evenson explained that he thought that ribs did not belong on a product hung on a wall (Tr. 283-284, 290). Sterling currently sells two plastic wall pockets that use a cored rib design similar to that of the Eldon Stackable — the Handi-Mate and the Handi-Mate Add-on (PX C-8 at 98). 16. Evenson began to work at Eldon in 1973. His first position was manager of the New Products Development division. Today, he is the vice-president of that division (Tr. 214-215). He has designed various products for Eldon besides those at issue in this lawsuit (Tr. 217-226; PX Eldon 2 at 4-5, 7-8). 17. Sometime prior to 1979, Evenson developed a vertical sorter which featured the ribbed design, the 1655 Vertical Sorter, designed to fit on top of the 1600 Letter Size Stackable tray. While ribs were used in the sorter, the coring process was not utilized; the side walls are solid plastic with an embossed rib design. The sorter contains five compartments created by four dividers which can be adjusted to create different sized compartments to meet the user’s needs. The sorter is sold by itself as well as with the 1600 tray (Tr. 40-41, 224-225; PX Stackable 7; PX Eldon 2 at 13; PX C-5 at 267). The 1656 Vertical Sorter, also an Eldon product, is identical to the 1655 Vertical Sorter except that it contains six compartments and five dividers (PX Stackable 8; PX Eldon 2 at 13; PX C-5 at 267). These products were introduced in 1979 (DX 40). 18. Eldon also utilized the ribbed design of the Stackables in its 1601 Add-A-File, a modular vertical sorting system. Herbert Rome created the Add-A-File concept. Rome, Paulsen, and other Eldon employees were involved in the design of the product (Tr. 56). The cored rib design transverses the entire face of the product. The plastic rib in the center of the wall is thicker than the other ribs. Two or more Add-A-Files can be used as interlocking units to create any size vertical file. Add-A-Files are currently available in 18 colors (Tr. 290; PX Add-A-File; PX Eldon 2 at 13). The material of which an Add-A-File is composed depends upon its color. In 1984, the “smoke” version was made of general purpose styrene, with other colors composed of medium impact styrene (PX QuickSnap 9). 19. Eldon applied for and received design patent No. 220,633 on the design configuration of the Add-A-File. It was valid May 4, 1971 through May 4, 1985. The wide center rib on the Add-A-File is clearly visible in the drawings attached to the patent application (DX 32). 20. Other Eldon products included two lines of stacking trays which required separate support mechanisms, the 1300 Series and the 1400 Series. Neither of these lines utilized a ribbed design. Eldon designed its Image 1500 line to replace these two series, although the 1300 Series is still available (Tr. 69; PX Eldon 2 at 6; DX 5). 21. Eldon developed the plastic Image 1500 line because of a perceived need for desk accessories compatible with the contemporary trend in office designs (Tr. 65-66). Eldon wanted its new line, the designing of which began in 1978, to possess a high-tech, modern look. Mel Evenson designed the Image 1500 line (Tr. 229-230). This line did not utilize sharp angles and corners. The accessories have “radiused” (i.e., softened) edges and rounded corners to produce a soft look (Tr. 65-66). Radiused corners increase the strength of a product that is “thin-walled,” a process where the thickness of a wall section is reduced (Tr. 364). While thin-walling may reduce the quantity of material used, it does not necessarily reduce its cost (Dep. of Szablak at 30-31; Dep. of Fowler at 129-130). Eldon wanted to have this line ready for the 1979 National Office Products Association (“ÑOPA”) show, an annual event at which various office product manufacturers display their goods (DX 4 at 2). 22. The Image 1500 line includes the 1570 Letter Tray (PX Image 2; PX Eldon 2 at 4) and the 1579 Legal Letter Tray (PX Image 3; PX Eldon 2 at 5). Each tray, composed of polystyrene, has a partially closed front. The base of the tray does not contain a trough. The bottom of the base of each tray contains four small, short circular legs, one in each rounded corner. The trays are stacked by using plastic 1539 Stacking Supports (Tr. 66-67, 71, 273-274; PX Image 1; PX Eldon 2 at 4). Each support, made of general purpose styrene, is approximately three inches long. One end contains a groove to fit over the edge of the lower tray. Towards the other end there is an extension of plastic into which the circular leg of the upper tray fits (Tr. 271; PX Image 1). There are no grooves on the tray itself (Tr. 238). Four stacking supports are needed to stack two trays. The user can stack both legal and letter trays together if he so desires. 23. Evenson reviews the products currently available in the marketplace when designing a new product or line of products. With respect to the development of the Image 1500 line, several products were reviewed. One of these was a plastic letter tray manufactured by McDonald Products called the Duk-it tray. This tray has a partially closed front, rounded edges, and four short circular legs on its bottom. The Duk-it legs, comprised of a soft, spongy material, are much larger than the Image 1500 legs (Tr. 193-194; PX Evenson 3; DX 3, 4). The Duk-it accessory has a deeper tray and longer supports than the Image tray (Tr. 278). The Duk-it tray utilizes four stacking supports which fit into two grooves located in the tray's side walls. A tray placed on top of the supports simply rests on top of them (Tr. 199-200; PX Evenson 3). The corners of the bottom of the Duk-it tray are nearly completely rectangular, with a hint of roundness (Tr. 200; DX 3). Evenson, at a New Product Development Committee Meeting held in January 1978, demonstrated how, in contrast to the Duk-it tray in his new design he had lowered the tray’s bottom and reduced the opening at the front of the tray (DX 5). 24. At a similar meeting held in April 1978, the committee, including Evenson, Glen Church and Herbert Rome, reviewed McDonald, Rubbermaid, Glassform, Smith Metal Arts and Sterling Plastics trays (Tr. 196, 231). The Smith tray is a preassembled double tray; the two trays are screwed together, making the method of attachment visible. The Smith tray has a partially closed front end, but its front end is much more closed than that of the Duk-it tray (Tr. 231-234; PX Evenson 1). The Smokador tray is also a preassembled accessory. It also has a partially closed front end, but its front opening is larger than that of the Duk-it. The Smokador product uses pins to stack two trays; this method of attachment is also visible (Tr. 234; PX Evenson 2). 25. Other accessories in the Image 1500 line include a memo holder, a calendar holder, an ash tray, and a tape dispenser (Tr. 71; PX Eldon 2 at 4; PX Image 4, 5). Most of the line is in the permanent collection of a Grand Rapids museum (Tr. 242). The tape dispenser has been featured in New York City's Whitney Museum as an example of fine modern design (Tr. 217-218). 26. There is not, and never was, a design patent for the Image 1500 line (Tr. 198). None of the Image 1500 accessories is registered on either the Trademark Principal or Supplemental Register. 27. The soft look of the Image 1500 line was carried over by Eldon into its Emphasis 6000 line, also designed by Evenson, which utilized polished chrome, brass and antique bronze plating (Tr. 72, 221; PX Eldon 2 at 8; PX C-6 at 191). This line, aimed at the “higher-end design community,” is more expensive than the Image 1500 line (Tr. 73-74). This line includes the 6070 Letter Tray (PX Image 6), the 6079 Legal Letter Tray (PX Image 7), the 6073 Memo Holder (PX Image 10), and the 6074 Calendar Holder (PX Image 11). The Emphasis 6000 line also contains pre-assembled stacking trays, the 6087 Double Letter Tray (PX Image 8) and the 6089 Double Legal Letter Tray (PX Image 9). 28. Eldon also carried over the soft look of the Image 1500 line to another Evensondesigned line, the Woodline 6500 Series. These office accessories are available in oak and walnut. The line contains the same accessories as the Emphasis 6000 line (Tr. 74-75, 222; PX Eldon 2 at 9; PX Image 12, 13, 14, 15; PX C-6 at 190). In addition, Eldon has recently used the Image 1500 soft look in a line of leather office accessories (Tr. 75, 251; PX Image 16). 29. There was no consumer testimony or survey evidence regarding whether the consuming public associated any of the designs claimed by Eldon to be entitled to trade dress protection with Eldon (or any single producer) prior to the introduction of the challenged Rubbermaid products. Rubbermaid’s Products 30. In 1973, Rubbermaid was marketing its SnapStack Letter Tray, a stacking side-loading tray. At one time this tray was available in a plastic known as general purpose styrene. This tray did not utilize a ribbed design. The top portion of each side wall contained three rectangular holes with soft rounded angles (Tr. 51, 266; PX Rubbermaid 4 at 6; Dep. of Crawford at 102-103). In approximately 1978, James Hampshire, a Rubbermaid Manager of Product Development, designed the legal size Snap-Stack tray (Tr. 614-615, 620). The legal size tray was advertised in Rubbermaid’s 1979 catalogue (PX Rubbermaid 2 at 8). 31. In its 1979 catalogue, Rubbermaid also offered its Designer II line. This line included both letter and legal size trays. These trays did not simply stack upon themselves; rather, two rectangular risers were required to support the upper tray (PX Rubbermaid 2 at 5). This line is still available (PX Rubbermaid 3 at 6). 32. By January 1982, Rubbermaid was suffering serious breakage problems with the SnapStack molds. The molds were in constant need of repair (Tr. 621; PX Quick-Stack 7; Dep. of Crawford at 109; Dep. of Parker at 115; DX 20 at 3). Although this problem could have been remedied if the dovetails (the interlocking system) were redesigned, such action would have been costly (Tr. 671; DX 18). There was also a problem in that the trays were “over-engineered,” that is, the structural quality of the trays was excessive given the functions for which they were designed, and as a result, they were too expensive to produce (Tr. 623). 33. In the early 1980’s, Eldon was the leading manufacturer of stackable desk trays. According to Rubbermaid, Eldon then held 87% of the tray market, amounting to approximately seven million dollars in sales. Rubbermaid held 6%, based on sales of its SnapStack trays (PX Quick-Stack 2, 4; DX 18). 34. Rubbermaid developed the Quick-Stack line to replace the SnapStack products. Rubbermaid’s express objectives in producing the QuickStack line were to replace Eldon as the market leader in plastic economy trays and “to design and develop a line of four self stacking letter trays that will be price competitive and interstack” with the Eldon stackable line (PX Quick-Stack 2, 4, 7). When designing the stacking portion of the QuickStack line, Rubbermaid took measurements from at least one Eldon Stackable (Tr. 678). The QuickStack trays interstack with the Eldon Stackables (Tr. 710). The QuickStack trays were not designed to interstack with SnapStack trays and do not do so (Tr. 52; Dep. of Crawford at 106). 35. The QuickStack trays, with the exception of the 2554 tray, are side-loading trays. None contains hand-holes. Each incorporates a cored rib design with spaces between the ribs transversing the entire width of each side wall. It also utilizes an embossed rib design (no coring) in the floor of the tray. The Rubbermaid logo is located on the bottom of the tray; it is not visible when the tray is in use (PX Quick-Stack 10). 36. The QuickStack line was also designed to be similar in appearance to the Eldon line, with colors in the same range as the Eldon colors (PX QuickStack 1, 2). In choosing colors, Rubbermaid telephoned various wholesalers to learn what the most popular colors being sold by Eldon were. The initial colors used by Rubbermaid were similar to the most popular Eldon colors (Dep. of Crawford at 149-150). 37. The QuickStack was initially made of general purpose styrene (PX QuickStack 4, 5). There were some breakage problems with the ribs of the QuickStack). It is now made of acronium nitrobutolidine styrene (“ABS”) plastic and medium impact plastic (Dep. of Crawford at 113,131, 202; Dep. of Szablak at 29). ABS plastic is a stronger material than general purpose styrene (Dep. of Parker at 123). 38. Before commencing production of the QuickStack line, Rubbermaid had its legal department review whether Rubbermaid might be infringing anyone’s patents (PX QuickStack 3). 39. Rubbermaid manufactured its four sizes of the QuickStack (2551 letter, 2552 legal, 2553 EDP, and 2554 front-loading letter) in time to be displayed at the 1983 ÑOPA show (Tr. 637, 639). 40. The packaging of the Rubbermaid stacking trays makes clear that they are Rubbermaid products. The blue and white Rubbermaid logo is clearly displayed on the QuickStack packaging. Additionally, the names of Rubbermaid Commercial and Rubbermaid, Inc. appear on the packaging (DX 15). 41. An examination of the Rubbermaid QuickStack and the Eldon Stackable reveals that they are not identical. The Stackable contains a hand-hole on each side wall; the QuickStack does not — its ribs transverse the side wall. The side walls of QuickStack contain a hot stamp area (for wood appliques) beneath the ribs; the Stackable does not — its ribs transverse the complete height of the side walls. The inside bottom of the Stackable is smooth; the inside bottom of the QuickStack is not — it is covered with an embossed rib pattern. 42. In approximately 1983, Eldon learned that Rubbermaid was manufacturing the QuickStack rather than the Snap-Stack. Eldon considered whether to institute legal action against Rubbermaid at that time. Eldon decided against legal action based on a number of considerations, including whether Eldon, a relatively small company, had the ability to sustain a lawsuit against Rubbermaid, a much larger company, and whether Eldon wanted to expend its manpower and resources on litigation. Furthermore, Eldon was aware that its design patent on the Stackable line was due to expire in approximately two years, prior to the probable conclusion of any litigation pursued. Eldon made no contact with Rubbermaid to express concern about possible infringement relating to the QuickStack (Tr. 52-53). 43. On January 6, 1986, Eldon applied for registration of its Stackable line on the Trademark Principal Register. Eldon claimed a date of first use of June 23, 1969. and an in commerce date of July 11, 1969. The PTO denied this application April 10, 1986, on the asserted ground that the design configuration of the tray was merely descriptive and as such lacked secondary meaning. Eldon then amended its application to seek registration on the Trademark Supplemental Register. In its amendment, Eldon stated that it was not agreeing with the position of the PTO that its design configuration lacked secondary meaning but was converting its application as a matter of expediency. Eldon received Trademark Supplemental Registration No. 1,403,589 on the Stackable desk tray line July 29, 1986 (Tr. 89; DX 31). 44. In March, 1986, Eastman, an important Eldon customer, complained to Eldon personnel that the smoke-colored Stackable trays it had purchased recently from Eldon were breaking more frequently than in the past. John Duncan, an Eastman representative, called Eldon’s Church to tell him that a Rubbermaid salesman had come to Eastman to display a comparable Rubbermaid product. A strength test was performed by Eastman and the Rubbermaid salesman. They stood on each tray — Eldon’s broke. Rubbermaid’s did not (Tr. 170; DX 2).- 45. In June 1986, Glen Church distributed to various regional managers and representatives a memorandum seeking their assistance in learning whether Rubbermaid’s QuickStack trays were being substituted by dealers for orders for either the 1600 or 1601 Stackables. In part, the memorandum stated, “Substitution of their product for Eldon’s would be considered to effect [sic] our trademark rights and is an important issue in our pursuit of Rubbermaid. We can cause this product item and its associated problems to go away by forcing Rubbermaid to withdraw from the market” (DX 35). 46. Rubbermaid produces other desk accessories, including a vertical sorter called the Snap File. The Snap File is part of Rubbermaid’s Designer II line. Although developed prior to the QuickSnap, it is still available, now made of general purpose styrene. It does not utilize a ribbed design (Tr. 426; PX QuickSnap 14; Dep. of Parker at 101-102; PX C-12 at M420). Rubbermaid has had a breakage problem with the Snap File (Dep. of Crawford at 127). 47. Rubbermaid began to design the QuickSnap in 1984 to compete with the Eldon Add-A-File (Tr. 642; PX QuickSnap 2). Rubbermaid Staff Designer Robert Jourdian designed the QuickSnap. Jourdian purchased an Eldon Add-A-File before he began to draft the QuickSnap, and he used the dimensions and shape of the Add-A-File in designing the QuickSnap (Tr. 703-704; Dep. of Jourdian at 4, 33-35). Rubbermaid, following its customary practice, tested the competitive product to determine the material of. which it was composed (Dep. of Szablak at 120-121). 48. Rubbermaid utilized a cored rib design in the QuickSnap. In the initial design phase, the product’s ribs were thinner than they are currently. They were subsequently widened because of mold considerations (Dep. of Parker at 126-127; Dep. of Jourdian at 53, 77-78, 127). Its ribs are of uniform width throughout its wall, unlike the Eldon version, which has a wider center rib (Tr. 262; PX QuickSnap 13). The Rubbermaid logo is located on the bottom of the QuickSnap, so it is not visible in advertising or when the product is in use (PX Quick-Snap 13). 49. In designing the QuickSnap, Rubbermaid wished to achieve visual compatibility and interconnection with the Add-A-File. The Rubbermaid QuickSnap was specifically designed to interconnect with the Eldon Add-A-File. The two are actually capable of interconnecting. Before Rubbermaid introduced the QuickSnap to the marketplace, it revised the mold a number of times because the fit between the Quick-Snap and the Add-A-File was viewed as unacceptable (PX QuickSnap 10; Dep. of Jourdian at 116-117). 50. The QuickSnap was also intended to complement Rubbermaid’s QuickStack line (Tr. 646-647; DX 21 at 1). The QuickSnap is visually similar to the QuickStack line in that both utilize cored vertical ribs. They are also similar in color. Rubbermaid decided to use the QuickStack colors for the QuickSnap products. It planned to produce the QuickSnap out of general purpose styrene in 5 colors (PX QuickSnap 9; Dep. of Crawford at 149-150). 51. In many of its internal documents, Rubbermaid referred to its vertical sorter concept as the “Add-A-File” (PX Quick-Snap 1, 3, 6, 7, 9). In one internal document, the QuickSnap was referred to as Rubbermaid’s “Eldon Add-A-File knockoff” (PX QuickSnap 7). 52. During the preliminary injunction hearing, Allen Falls, a product manager for Rubbermaid Commercial’s Office Products Division, misidentified, at a distance of some feet, a Rubbermaid QuickSnap as an Eldon Add-A-File (Tr. 519, 573). While recognizing that such a mistake may be due in part to factors such as the stress of testifying and the pace of the proceedings, it is evidence of the visual similarity of products, at least when not closely examined. 53. On March 16, 1989, Sam Clemens, an Eldon Regional Manager, went to the Warehouse Club, a discount store in Niles, Illinois. He noticed a sign identifying packages of Rubbermaid QuickSnaps as “Rubbermaid Add-A-File” (Aff. of Clemens). The Warehouse Club does not sell Eldon Add-A-Files (Aff. of Daly). Clemens purchased a package of QuickSnaps from that display; the register receipt identifies the product as an “Add-A-File” (Aff. of Clemens). Warehouse Club personnel, however, never believed that they were selling Eldon Add-A-Files rather than Rubbermaid QuickSnaps, and they are unaware of any Warehouse club customer who mistakenly believed that the Rubbermaid QuickSnap was an Eldon product (Aff. of Daly). This incident is not, in this court’s view, probative of confusion. 54. Rubbermaid has developed other products in the QuickSnap line, including accessories not offered by Eldon to complement the Add-A-File. Rubbermaid made its decision to produce additional accessories in order to gain a sales advantage over Eldon: the Eldon line would be viewed as incomplete in comparison with the Rubbermaid line, and therefore customers would purchase accessories from the more complete Rubbermaid line (PX QuickSnap 2 at 3). 55. Early in 1987, Michael Szablak, a Rubbermaid designer, was asked by Thomas Parker, a Rubbermaid manager, to consider whether the QuickSnap could be redesigned. Szablak explored various alternatives with Edward Tomblin, a product engineer. The alternatives included a modification of the ribbed design. Szablak gave Parker a list of possible changes (Dep. of Szablak at 137-140). There was no evidence that any of these changes was adopted. 56. The packaging of the QuickSnap makes clear that the QuickSnap’s producer is Rubbermaid. The QuickSnap packaging contains the blue and white Rubbermaid logo. It also contains the names of Rubbermaid Commercial and Rubbermaid, Inc. (DX 16). 57. The Add-A-File and the QuickSnap are not identical. The width of the Quick-Snap ribs is uniform, while that of the Add-A-File is not, the center rib being noticeably wider than the others. The QuickSnap contains a small plastic protrusion on the top of its center rib, while the Add-A-File does not. The Add-A-File ribs continue towards its base; the QuickSnap ribs do not. The QuickSnap contains a hot stamp area; the Add-A-File does not. The dovetail system of the two products is different, but the two products nevertheless interlock (PX Add-A-File; PX QuickSnap 13). 58. In the autumn of 1985, Eldon’s Evenson and Silverstein attended the NOPA show in Chicago. Both Evenson and Silverstein observed that Rubbermaid was displaying its QuickSnap and that this product resembled the Eldon Add-A-File (Tr. 58, 228-229; PX Eldon 9 at 1). 59. Following the 1985 NOPA show, Eldon’s Silverstein wrote a letter dated October 16, 1985 to Rubbermaid’s Gault regarding the similarity of the QuickSnap and the Add-A-File. Silverstein stated: If you recall, when we met for lunch in Los Angeles, I expressed concern regarding the trend of Rubbermaid Office Products closely copying Eldon Office Products. To refresh your memory, I am enclosing a catalog of Eldon’s “Stackable” trays which have been in Eldon’s line for approximately 16 years, and one of Rubbermaid’s “Quick Stack” trays which were introduced last year. There are other examples of products that have been closely copied by Rubbermaid. (PX Eldon 9 at 1). Silverstein also expressed his concerns about other “closely copied” products, but did not identify any such products. He further informed Gault that he had seen the QuickSnap at the 1985 NOPA show, and had “instructed [Eldon’s] attorneys to take whatever action the law permits” against Rubbermaid (PX Eldon 9 at 1). 60. On November 5, 1985, Eldon’s executives, concerned about copying by Rubbermaid, compared the QuickSnap and Add-A-File. The similarities and differences between the two products were compared, and Eldon concluded that Rubbermaid did not duplicate the Add-A-File using a pantograph (a copying instrument) because of the “subtle differences” that existed between the two products. The study specifically revealed that the QuickSnap used four dovetails to Eldon’s two and had shorter return slots, deeper recessed “feet,” a thicker back panel, and a different gate than the Add-A-Fi