MEMORANDUM AND ORDER
*114 TABLE OF CONTENTS February 5,1998
L INTRODUCTION.114
II. BACKGROUND. y — I t — I
A. Characteristics of the Products t-H i — I
III. DISCUSSION. 116
A. Preliminary Injunction Standard. 117
B. Trademarks and Trade Dress. 117
C. Trade Dress Infringement. 119
1. Is The VOLA Distinctive?. 120
a. Inherently Distinctive Product Design. 120
b. The VOLA Has Acquired Secondary Meaning. 120
c. Is There A Likelihood Of Confusion?. 121
i) Whose Confusion Counts?. 121
' ii) Eight-Factor Test For Likelihood Of Confusion 122
D. Trade Dress Dilution . 124
1. The Fame And Distinctiveness Of The VOLA Design .. 125
2. Dilution By Blurring. 125
3. Blurring Factors. 126
IV. CONCLUSION. 127
I. INTRODUCTION
This case involves the scope of protection accorded trade dress under the new Federal Trademark Dilution Act of 1995 (15 U.S.C. § 1125). I.P. Lund Trading ApS (“Lund”) seeks protection for what courts often call a “product configuration,” here a bathroom faucet known as the VOLA (“VOLA”). The VOLA was- designed by a Danish inventor nearly thirty years ago. Lund has owned and marketed the product since its inception. The faucet is distributed in the United States by Kroin Incorporated (“Kroin”). Defendants Kohler Company (“Kohler”) and its subsidiary Robern, Inc. (“Robern”), 1 recently designed a similar product called the Falling Water faucet and started marketing it in 1995.
Plaintiffs seek to enjoin defendants from máking, promoting or selling any products having a confusingly similar design to the VOLA, based on sections (a) and (c) of 15 U.S.C. § 1125. 2 The first section, 1125(a), protects against trade dress infringement, under which the plaintiff is obliged to demonstrate a likelihood of confusion among consumers as to the source of the products.
The second section, 1125(c), protects against trade dress dilution, under the Federal Trademark Dilution Act of 1995. A trade dress dilution claim does not require a finding of a likelihood of confusion among consumers as to the source of the products; rather, it requires that the senior trademark 3 be distinctive and famous, and that the junior mark have the effect of lessening the famous mark’s identifying and distinguishing capacities. 15 U.S.C. § 1125(c).
Included in the. defendants’ briefs is a significant constitutional challenge, but one that cannot be resolved on the papers before me. Defendants argue that the extension of the dilution statute to this trade dress claim is unconstitutional under the Patent Clause of the United States Constitution, U.S.C. Const. *115 art. I, § 8, cl. 8. 4 Such an extension, they suggest, has the effect of providing potentially unlimited protection to the product design of a competitor, and does so without proof of any likelihood of source confusion. The Constitution, defendants argue, mandates that patent protection gives to the “author and inventor” exclusive rights “for limited Times” only. Id.
Broadly speaking, the preliminary injunction stage is an inappropriate setting to address such constitutional issues, especially those that are, to a degree, issues of first impression. Accordingly, I invite the parties, and any amici, to file additional memoranda of law on the question of whether the federal dilution statute impermissibly extends patent protection beyond a limited time. A status conference shall be held on February 11, 1998, at 2:00 p.m., in courtroom 4 on the 12th floor, to consider these and other issues.
On the record before me, the plaintiffs’ motion for a preliminary injunction based on their claims of trade dress infringement is DENIED, as plaintiffs are not likely to show a likelihood of confusion among potential consumers. The plaintiffs motion for an injunction based on their claims of trade dress dilution is GRANTED, as plaintiffs are likely to prove dilution by the blurring of the VOLA’s trade dress. The constitutional questions are RESERVED for further briefing.
II. BACKGROUND
Lund is a family-owned Danish corporation, established in 1873, which manufactures high-end kitchen and bathroom faucets, fixtures, and accessories. The VOLA faucet was designed by the distinguished architect Professor Arne Jacobsen (“Jacobsen”) in 1968. It has won numerous design awards, including the Danish ID prize for industrial design innovation, and the Danish Classic ID prize (awarded to products whose designs have survived and thrived for 25 years without significant design modification).
The VOLA faucet design has remained virtually unchanged throughout the past 28 years. Since 1969, the year the VOLA products were introduced, Lund has sold more than 600,000 VOLA faucets throughout the world. The VOLA line serves as Lund’s principal source of revenue.
Co-plaintiff Kroin is the sole American distributor for the VOLA, and Kroin’s owner, Larry Kroin, was its first American distributor, starting in 1976. Kroin has since sold thousands of VOLA faucets, amounting'to approximately $16 million worth of sales. Between 1988 and 1997, Kroin spent more than $684,000 to advertise the VOLA.
Lund has promoted the VOLA faucet across the world, spending more than $10 million since 1980. Most of the advertisements for the VOLA are print advertisements that appear in prestigious design magazines, including Architectural Record, Interior Design, and Interiors. Hundreds of pictures of the VOLA have appeared as parts of photo spreads in these magazines, and other less specialized magazines, such as Better Homes and Gardens.
Kohler, based in Kohler, Wisconsin, is the largest plumbing fixtures supplier in the United States, with more than $1.5 billion worth of sales in 1996 alone. Kohler sells hundreds of different kitchen and bathroom sanitary fitting designs. On November 22, 1994, Kohler’s Purchasing Manager, Jeffrey Klosterman, contacted Lund expressing Koh-ler’s “interest[] in the possible purchase of this product [the VOLA] and potentially others that you may have ... for resale under our brand name in the United States.” The letter further requests volume pricing, and seeks several samples for testing “under United States regulations.”
In January, 1995, Kohler purchased from Lund eight VOLA 121 C faucets “to begin qualification testing.” According to Kohler, in September, 1995, the company intended to introduce the new “Vessels” basin, a “high-end sink with no holes (as compared to the *116 normal three-hole sink) ...” 5 and sought an accompanying faucet for its product. While the VOLA was compatible with the Vessels sink, Kohler claims that an April 1995 test report showed that the VOLA faucets did not comply with federal and state legal “requirements.” Specifically, defendants allege that the VOLA did not meet requirements concerning water flow capacity and resistance to hydrostatic pressure. 6 The plaintiffs dispute these findings, as well as the significance of any such federal, state, or local “requirements.’.’
Robern, before it became a Kohler subsidiary, designed a bathroom sink module which was compatible with the VOLA, known as the MTS Sink Module. Indeed, it sold these modules with VOLA faucets purchased from Kroin. Between January 1993 and September 1995, Robern purchased 218 VOLA faucets directly from Kroin.
In August 1995, Kroin allegedly accused Robern of selling VOLA faucets to Kroin customers for prices lower than what Kroin was charging. Kroin then refused to sell Robern any more VOLA faucets. Shortly thereafter, Kohler acquired Robern. In August, 1996, Robern announced that it would ship MTS Sink Modules with Kohler’s Falling Water faucets, which are also compatible with no-hole, freestanding vessel sinks.
The Falling Water faucet was designed by Erich Slothower, a Kohler industrial designer. He testified that while he was aware of the VOLA, and even looked at it carefully before designing the Falling Water, he consciously tried to make his faucet different in appearance than the VOLA.
A. Characteristics of the Products
At first glance, the Falling Water may seem similar in overall appearance to the VOLA. Similarities between the two faucets include the following: (1) both are single-control, wall-mounted faucets; (2) both control handles utilize a thin cylindrical lever to adjust water temperature and volume; (3) both faucets’ spouts and aerator holders are of uniform diameter; (4) both spouts bend downward at right angles softened by a curve; and (5) both faucets offer spouts in almost exactly the same three lengths.
Defendants point to the differences, namely: (1) the Falling Water has a tapered and rounded bonnet on the handle, and when the lever on the bonnet is operated to control the water temperature and volume, the entire bonnet moves with it; by contrast the VOLA handle is shorter, it is a completely uniform cylinder, not tapered, and only the lever moves to control volume, while the lever and cylinder turn clockwise or counter-clockwise to control temperature; (2) the Falling Water’s lever is rounded on the top, while the VOLA’s lever is flat; and (3) the mounting end of the Falling Water spout also has a tapered, rounded bonnet, mirroring that of the handle and lever, while the VOLA spout has no bonnet.
III. DISCUSSION
Plaintiffs claim the sale of the Falling Water faucet, and its advertisement in cata-logues that also depict the VOLA faucet (indeed, side-by-side), causes confusion among retailers and customers, and dilutes the brand-identity of the VOLA faucet, all in violation of 15 U.S.C. § 1125(a) & (c).
Defendants respond that the majority of sinks in the United States are “three-hole” sinks. Because both the VOLA and the Falling Water faucets require freestanding vessel basins, neither is appropriate for the majority of American homes. To the extent that there is a market for either product, it consists of high-end products purchased mainly by sophisticated consumers. Hence defendants argue there is no likelihood of confusion amongst potential purchasers of these products.
The defendants also contend that the VOLA design is not entitled to trademark protection under 15 U.S.C. § 1125(a): It is not a source indicator or inherently distinctive; nor has it acquired secondary meaning. Even if the VOLA is entitled to protection *117 for its design, defendants maintain that this design is not sufficiently “famous and distinctive” within the meaning of 15 U.S.C. § 1125(c) to qualify for protection against dilution.
Finally, the defendants argue that dilution protection should not cover trade dress, especially, where, as here, plaintiffs are competitors of Lund and seeking protection for the design of a like product. The extension of such protection, they argue, violates the Patent Clause of the United States Constitution. ■ As described elsewhere, I will reserve defendants’ constitutional claims for further briefing.
A. Preliminary Injunction Standard
Before granting the extraordinary relief of a preliminary injunction, I am obliged to consider and balance the following four factors: 1) whether the plaintiff has exhibited a likelihood of success on the merits of its claims; 2) whether the plaintiff risks suffering irreparable injury if the injunction is not granted; 3) whether the public interest will be adversely affected by the granting of the injunction; and 4) given a likelihood of success on the merits, whether the injuries complained of by the plaintiff outweigh harms that granting the injunction would inflict on the defendants.
See TEC Eng’g Corp. v. Budget Molders Supply, Inc.,
In the context of trademarks, if the plaintiffs demonstrate a likelihood of success on the merits, two consequences follow: (1) there is a very strong likelihood that plaintiffs will suffer irreparable injury absent an injunction,
see Omega Importing Corp. v. Petri-Kine Camera Co., Inc.,
B. Trademarks and Trade Dress
Federal protection of trademarks has expanded in a number of ways. The original understanding of the word trademark was as a two dimensional symbol (word, name, device or combination thereof) adopted and used by a merchant to identify her goods and distinguish them from articles produced by others. A cause of action for infringement was based on theories of unfair competition. Over time, the concept of a protectable mark was extended by courts to include “trade dress,” a three dimensional product design or packaging. The cause of action expanded to one for dilution, focusing on the acts of a non-competitor who tarnished or blurred the distinctiveness of the mark by linking it to unrelated products.
This case involves both a traditional infringement claim as well as one several degrees removed from the traditional—trade dress dilution claims, brought against a competitor, for the design of a similar product. I will briefly describe the evolution of these causes of action.
Prior to the passage of the Federal Trademark Dilution Act, trademarks were protected under section 43(a) of the Lanham Act from infringement only. Infringement suits focused on the acts of competitors diverting sales by “passing off’ one competitor’s goods as those of another, thereby confusing the public as to the source of the product. The threshold question for a non-registered mark
*118
was whether, in trademark parlance, it was “distinctive.” A mark would be considered distinctive when it represented a feature by which consumers “identify and distinguish a product from others,” 15 U.S.C. § 1052. Protection was triggered when such a mark was either “inherently distinctive” or when it had acquired distinctiveness, i.e. acquired secondary meaning in the minds of the relevant public.
Two Pesos, Inc. v. Taco Cabana, Inc.,
Over time, trademark protection was extended to cover not only words or symbols identifying products but also the packaging and even features of the product itself. This concept became known as trade dress, “the design and appearance of [a] product together .with the elements making up the overall image that serves to identify the product presented to the consumer.”
Chrysler Corp. v. Silva,
In
Two Pesos,
Significantly, no court has held that the extension of trademark infringement protection to protection of trade dress in a product’s design impinges on the constitutional limitations on design patent protection.
See, e.g., Kohler Co. v. Moen, Inc.,
What the original Lanham Act did not cover were the actions of non-competitors appropriating a famous mark. 8 Such actions would obviously not deceive or confuse customers purchasing the goods designated by famous marks; typically, different products were involved. 9 Nevertheless, courts in various countries and statutes in individual states recognized that the appropriation of a well-known mark could give a non-competitor an unfair and unearned advantage in the marketplace. 10 As a result, the initial mark *119 would be “diluted,” disassociated from the product in connection with which it had been used.
With the passage of the Federal Trademark Dilution Act, 11 the Lanham Act finally protects against dilution. Section 43(c) permits the owner of a “famous” mark to obtain injunctive relief against uses of its mark which either tarnish or blur its distinctiveness. Consistent with dilution theory, 15 U.S.C. § 1127 does not require a showing of a likelihood of confusion, mistake or “deception.” Nor does it matter if the products at issue belong to a non-competitor. Congress defined dilution such that it may now be found regardless of the “presence or absence of ... competition between the owner of the famous mark and other parties.” 15 U.S.C. § 1127.
Defendant Kohler argues that trade dress dilution extends the Lanham Act, and even dilution theory, far beyond their original boundaries by providing: (1) protection for a product design (2) to similar products of competitors, (3) married to a theory that could be more diffuse than an infringement theory, namely one that does not even require proof of consumer confusion, (4) for an unlimited period of time. The Constitution’s Patent Clause, after all, specifies protection for “limited Times” only. U.S. Const, art. I, § 8, cl. 8.
Lund replies that the extension is appropriate; the case law made no distinctions between the protection of trademarks and trade dress prior to the passage of the Dilution Act. This issue, plaintiffs argue, has already been decided against the defendants, citing, for example,
Kohler,
On this truncated record, I am obliged to agree with the plaintiffs. The case law describes trade dress protection broadly.
See Kohler,
C. Trade Dress Infringement
The VOLA design is not registered. The relevant portion of the Lanham Act, 15 U.S.C. § 1125(a), creates a cause of action for trademark infringement of unregistered marks as follows:
Under this section, plaintiff is required to prove the following three elements to succeed in an infringement suit: (1) the ownership of a distinctive mark entitled to trademark protection; (2) the use of that [mark] in interstate commerce; and (3) its use by another in a manner likely to cause confusion as to the origin of the goods or services.
Calamari Fisheries,
The defendants concede that the plaintiffs are using the VOLA faucet design in interstate commerce. They contest whether this design is distinctive, either inherently or through the acquisition of secondary meaning.
12
Two Pesos,
1. Is The VOLA Distinctive?
a. Inherently Distinctive Product Design
There were two ways of establishing that a mark is distinctive: (1) that it is “inherently” distinctive; 13 or (2) that it has acquired distinctiveness, i.e. by acquiring among the relevant consumers a secondary meaning. As one commentator has described it:
The inherent distinctiveness analysis is prospective, even speculative. It is a predictive inquiry. In contrast, the secondary meaning inquiry focuses on evidence of actual consumer association. Another difference is that, in temporal terms, because inherent distinctiveness can be presumed immediately upon use, it affords instant protection. Secondary meaning takes time to develop. Even if it is inferred circumstantially, proof of secondary meaning must await the development of the evidence from which it can be inferred, and thus, protection is not available upon first use. 14
The Supreme Court in
Two Pesos
held that trade dress could also be judged by the “inherently distinctive” test without requiring a showing of the acquisition of secondary meaning.
Id.
at
However, if Lund’s design objective was “primarily aesthetic,” as the plaintiffs admit of the VOLA, then the VOLA’s design does not meet the test. As such, it is not “primarily” intended as source identification.
17
Knitwaves,
Thus, I conclude that, on this record, the design of the VOLA faucet cannot be considered inherently distinctive, within the meaning of trademark law.
b. The VOLA Has Acquired Secondary Meaning
Athough the VOLA faucet is not inherently distinctive, I agree with the plaintiffs that it has acquired secondary meaning. The establishment of secondary meaning in a product design is an issue of fact.
See Volkswagenwerk Aktiengesellschaft v. Rickard,
Recently, courts have considered whether a product feature is identified by “the more stringent ‘primary significance’ standard.”
Thomas & Betts Corp. v. Panduit Corp.,
Lund has been using essentially the same design for the VOLA since 1969. To many interior designers and magazine editors, the VOLA is known as a “Kroin faucet.” The VOLA is on display in Design Collections in museums such as the Museum Of Modern Art (“MoMA”), in New York City, where it was once for sale in the museum .shop. Whether it is called the Kroin faucet, or the VOLA (or the Jacobsen, after the architect who designed it), there is sufficient evidence in the. record for me to conclude that purchasers of high-end bathroom fixtures, including interior designers, now know the VOLA by sight. Consumers are moved to purchase the VOLA not just because it looks good, but because its design conveys status related to its unique source. 19
Defendants argue that because the VOLA is known by many names, the mark, in this case its design, does not serve primarily to indicate a single, unique origin or sponsor of the product. At this point in time, defendants’ argument is not persuasive.
20
See TEC Eng’g Corp.
c. Is There A Likelihood Of Confusion?
i) Whose Confusion Counts?
The third prong of the trademark/trade dress infringement test requires a showing
*122
that the infringing mark’s use is likely to cause confusion.
Dorr-Oliver, Inc. v. Fluid-Quip, Inc.,
The facts of the case at bar make it more like
Winship Green, id.,
and
Dorr-Oliver,
With this framework, I turn then to an application of the well-established eight-factor test first set out by the First Circuit in
Pignons S.A. de Mecanique de Precision v. Polaroid Corp.,
ii) Eight-Factor Test For Likelihood Of Confusion
The Pignons test includes the following non-exhaustive list 25 of factors to assess the “likelihood of confusion”:
the similarity of the marks; the similarity of the goods; the relationship between the parties’ channels of trade; the relationship between the parties’ advertising; the classes of prospective purchasers; evidence of actual confusion; the defendants’ intent in adopting its mark; and the strength of the plaintiffs mark.
*123 Applying the Pignons test to the ease at bar, it is apparent that the strength of the VOLA mark and the similarity of the goods (almost identical lavatory faucets) weigh in favor of a finding of confusion. Four other factors, however, weigh in favor of the defendants and a finding of no confusion: the classes of prospective purchasers, the channels of trade, the extent to which the marks can be distinguished by sophisticated consumers, and the defendants’ intent.
As the
Astra
court held, the inquiry - concerning classes of prospective purchasers can be “critical.”
The dissimilarity of the marks, particularly to the sophisticated market, is a third factor in favor of a finding that there is no likelihood of confusion. Despite superficial similarities, the rounded and tapered bonnets on the Falling Water, and the operation of its handle, described elsewhere, constitute obvious differences. Applying the
Pignons
court’s observation on similarity, “that in certain circumstances, otherwise similar marks are not likely to be confused where used in conjunction with the clearly displayed name and/or logo of the manufacturer,”
It is equally unlikely that potential purchasers will choose not to purchase the senior users’ product (VOLA) because they believe that the senior user is also sponsoring the junior users’ product (Falling Water).
See id.; Roberts,
As far as post-purchase confusion is concerned,
see Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.,
The defendants’ intent is a fourth factor weighing against a finding of confusion. The plaintiffs contend that the defendants intentionally copied their product: Kohler purchased eight VOLA faucets for testing, and the Falling Water’s designer, Erich Slothower, acknowledged that he looked at the VOLA before designing the Falling Water. More persuasive, however, was Slothower’s testimony that he was intentionally trying not to copy the VOLA. The added bonnets and other rounding features of the Falling Water, compared to the VOLA’s flat, cylindrical design, support Slothower’s testimony.
Two additional factors support neither the plaintiff nor the defendant: purported evi
*124
dence of actual confusion and the parties’ advertising. Plaintiffs do not, at this preliminary stage, need to present any evidence of actual confusion, since such a showing “is not essential in order to find a likelihood of confusion.”
Wheeler,
Ultimately, the aspects of the VOLA that make it protectable, the secondary meaning it has achieved in terms of design awards and prestige, also make it likely that those who desire the VOLA will be able to identify and purchase one. I conclude that under “the circumstances in which the ordinary consumer actually confronts (or probably will confront) the conflicting mark,”
Winship Green,
D. Trade Dress Dilution
15 U.S.C. § 1125(c)(1) provides:
The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection.
Dilution, unlike infringement, does not require a showing of a likelihood of confusion, mistake, or deception. 15 U.S.C. § 1127 (definition of “dilution”). The statute says only that:
The term “dilution” means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of—
(1) competition between the owner of the famous mark and other parties, or
(2) likelihood of confusion, mistake, or deception.
Dilution is, as courts have observed, a “ ‘somewhat nebulous concept’ and ... its application involves navigating in the ‘murky waters’ of anti-dilution analysis.”
Ringling Bros.,
In a federal dilution action, the plaintiff bears the burden of proving: “(i) that it owns a famous mark, (ii) that the defendant adopted its mark after the plaintiffs mark became famous, and (iii) that defendant’s mark dilutes the famous mark.”
Ringling Bros.,
While, as I have found, the public may not be confused as to the source of these faucets, the similarities between the Falling Water faucet and the VOLA may result in a lessening of the VOLA’s capacity to identify and distinguish Lund’s faucet from those of competitors. More simply, an individual could *125 deliberately purchase a Falling Waters faucet, knowing what it is, precisely because it looks like a VOLA, for any number of reasons. 28
1. The Fame And Distinctiveness Of The VOLA Design
The statute provides a non-exhaustive list of factors which a court may consider in determining whether a mark is both distinctive and famous. These are:
(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is used;
(E) the channels of trade for the goods or services with which the mark is used;
(F) the degree of recognition of the mark in the trading areas and channels of trade used by the mark’s owner and the person against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks by third parties; and
(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
15 U.S.C. § 1125(c)(1). I have already considered many of these factors in deciding the trademark infringement claims: the VOLA mark is strong, and has acquired secondary meaning in its market; and it has been used for some twenty years in this country. Thus, in its market, the VOLA’s design is famous and distinctive. 29
2. Dilution By Blurring
The two kinds of dilution historically recognized by state anti-dilution statutes are blurring and tarnishing.
See, e.g., Mead Data Cent. v. Toyota Motor Sales, U.S.A., Inc.,
At the most general level, blurring is “concerned with an injury to the mark’s selling power .... ”
Clinique,
*126
The analysis is complicated when blurring is applied to “similar,” or indeed, the same products. I have already determined that there has been an insufficient showing made regarding the likelihood of confusion as to the source or association of the two products. Thus, plaintiffs must argue that when someone deliberately purchases a Falling Water faucet because it looks like a VOLA, knowing full well the distinction, their product’s identification has been blurred.
31
To succeed on its dilution by blurring claim, Lund must demonstrate that “the use of a junior mark has caused a lessening of demand for the product or services bearing the famous mark _”
Ringling Bros.,
3. Blurring Factors
Judge Sweet, concurring in Mead Data, set forth the following factors which courts have been used to determine whether there is blurring under state law anti-dilution statutes: •
1) similarity of the marks;
2) similarity of the products covered by the marks;
3) sophistication of consumers;
4) predatory intent;
5) renown of the senior mark;
6) renown of the junior mark.
Mead Data,
The sophistication of potential consumers cuts in favor of a finding of blurring. Knowledgeable customers may well understand, as testimony suggests, that the Falling Water is easier to find and less expensive to purchase. Such purchasers may buy the Falling Water, knowing they are not getting a VOLA, but knowing, too, that they are getting a product of similar quality, albeit one that has not been featured in MoMA, for less money, with lower search costs.
Predatory intent also weighs in favor of a finding of a likelihood of blurring. “The likelihood of blurring is increased where a junior mark is used in the hopes of benefit-ting from its similarity to a famous mark.”
Ringling Bros.,
Lastly, in the world of interior design and high-end bathroom fixtures, the VOLA is renowned. While the Falling Water may not yet be renowned, it is manufactured and distributed by the largest plumbing supplies manufacturer in the United States. It has been advertised since its introduction; distribution channels behind it seem strong, and it *127 is likely to achieve some degree of renown in its market, if it has not already, in a relatively short time. These factors therefore weigh in favor of finding a likelihood of blurring,
On this record, plaintiffs have shown a likelihood of success on their claims that the Falling Water may eventually evaporate some of Lund’s capacity to distinguish its faucets from Kohler’s, and will likely dilute the VOLA’s brand identity.
IV. CONCLUSION
The plaintiffs’ motion for a preliminary injunction based on their claims of trademark infringement under 15 U.S.C. § 1125(a) is DENIED, as they have not met their burden of showing a likelihood of confusion. Lund’s motion for a preliminary injunction based on trade dress dilution under 15 U.S.C. § 1125(c) is GRANTED, as the VOLA is a famous mark, whose capacity to identify and distinguish VOLA faucets is likely to be lessened by defendants’ use of the Falling Water faucet. The constitutional question of whether the Dilution Act unlawfully extends patent protection is RESERVED.
A status conference will be held on February 11, 1998, at 2:00 p.m., at which point a briefing schedule will be entered to address the constitutional issues raised by defendants.
SO ORDERED.
Notes
. Throughout this opinion, I treat the defendants collectively as Kohler.
. Lund specifically moves for an injunction that would enjoin the defendants from: a)using the distinctive VOLA design to promote the sale of Robern and/or Kohler Falling Water products; b)making, promoting, or selling any products incorporating a confusingly similar design to that of the distinctive VOLA design; c)promoting or selling any products that are confusingly similar to the distinctive VOLA products and which may injure plaintiffs' business reputation or dilute the distinctive quality of said distinctive VOLA design.
.“Senior” mark is defined as the trademark of comparatively greater recognition, usually because it is first in time or is a stronger mark in the relevant market. "Junior” mark is defined as the trademark of lesser recognition.
. The Patent Clause of the Constitution gives Congress the power:
To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Investors the exclusive Right to their respective Writings and Discoveries.
U.S. Const, art. I, § 8, cl. 8 (emphasis added).
. The three holes in the "normal” sink are for the hot and cold spigots, and the water spout.
. Defendants allege that the VOLA flow rate at 80 pounds per square inch of water pressure is too high for both federal and state standards.
. As the Supreme Court said in a recent opinion, "[s]ince human beings might use as a 'symbol' or 'device' almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive.”
Qualitex Co. v. Jacobson Products Co., Inc.,
. See
Exxon Corp. v. Oxxford Clothes XX, Inc.,
. Traditionally, dilution analysis would, as the Act’s legislative history makes clear, involve a trademark being used for a different product, for example, Buick aspirin or Kodak pianos. H.R.Rep. No. 104-374, 104th Cong., 1st Sess. (1995), at 3, (citing "DUPONT shoes, BUICK aspirin, and KODAK pianos" as examples of potential dilution. The same examples were cited by the Second Circuit in
Hormel,
.
See
Alexander and Heilbronner,
The Lanham Act After Fifty Years: Dilution Under Section 43(c) of the Lanham Act,
59-SPG Law & Con-temp. Probs. 93, 94 (1996); Susan L. Serad,
One Year After Dilution's Entry Into Federal Trademark Law,
32 Wake Forest L.Rev. 215, 216 (1997).
See generally Exxon,
. The Dilution Act is set forth in a new Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and in a new definitional section of Section 45 of the Lanham Act, 15 U.S.C. § 1127.
. No one argues that the VOLA design is “functional,” as that term is used in trademark law.
See Two Pesos,
. Trademarks are considered inherently distinctive when "their intrinsic nature serves to identify a particular source of a product.”
Two Pesos,
. Graeme B. Dinwoodie, Reconceptualizing the Inherent Distinctiveness of Product Design Trade Dress, 75 N.C. L.Rev. 471, 487 (1997).
. This holding was qualified by the Court in its more recent decision in
Qualitex,
which held that if color alone is to function as a trademark (or as trade dress),
. According to the Federal Circuit, "the focus of the inquiry is whether or not the trade dress is of such a design that a buyer will immediately rely on it to differentiate the product from those of competing manufacturers."
Tone Bros., Inc., v. Sysco Corp.,
. The VOLA would also fail under the test set out by the Third Circuit in
Duraco:
A product feature or configuration of features must be "conceptually separable from the product, so that a consumer will recognize its symbolic (signifying) character.”
. Thus, as the Tenth Circuit held in
Vomado Air Circulation Systems v. Duracraft Corp.,
"mere association” between a product’s design and its source is insufficient to establish secondary meaning; rather, the "primary significance of the design in the consumer's mind” must be "as a brand identifier.”
. There are two other factors which courts often address in determining the existence of secondary meaning: whether the junior user of the mark intentionally copied "down to the smallest detail" the senior user's mark,
TEC Engineering,
.
See Centaur Communications, Ltd. v. A/S/M/ Communications, Inc.,
. It does not matter that the VOLA is also aesthetically pleasing,
see Roberts,
. The Sixth Circuit, however, in
Esercizio v. Roberts,
held that since Congress deleted the words "purchasers” from the Lanham Act in 1967, the Lanham Act protects against potential confusion on
anyone's
part, regardless of whether they might ever purchase the product which the mark identifies.
Following
Roberts,
the First Circuit addressed, in passing, post-sale confusion by "viewers who have an interest from the standpoint of the original creator’s reputation and may be misled.”
Chrysler,
. In
Dorr-Oliver,
the court noted that "[t]he proper examination is not whether some people
viewing
clamshells in industry plants might be confused, but rather whether
consumers in the market
for clamshells are likely to be confused.”
. And while the likelihood of post-sale confusion must be examined,
Chrysler,
. As the First Circuit noted recently in discussing the "eight-factor” test, "this compendium does not conform easily to the peculiar facts of this case, [and] it is not intended to be either all-encompassing or exclusive.”
Winship Green,
. "Similarity of the marks must be considered in light of what occurs in the marketplace, taking into account the 'circumstances surrounding the purchase of the goods' or services.”
Calamari Fisheries,
. There is at least one Robern brochure that depicts both Kohler’s Falling Water faucet and the VOLA. Neither faucet is listed as a product for sale, however, since only the sinks, cabinets, and other accessories are being advertised or sold thereby, not the faucets.
. Where once the VOLA design sold itself, now plaintiff argues that the VOLA design is helping to sell Falling Water faucets, and as a result, the design’s selling power is diminished.
. Fame, applied to this case, is best understood in the context of the channels of trade of the mark, and perhaps also in the junior user's channels of trade. The distinctive qualities of a mark are relevant mainly to the market for the product, or similar markets (such as the market for kitchen faucets); the fame of the mark in a product’s market, encompassed in the “owner's quasi-property right” in the mark itself, is protected by the Federal Dilution-Act.
See Ringling Bros.,
. While blurring often referred to cross-product confusion under state law, the federal law now plainly extends it to similar products. Cross-product confusion is not at issue here, although it is addressed in the legislative history of the Fed *126 eral Dilution Act. H.R.Rep. No. 104-374, 104th Cong., 1st Sess., at 3 (1995).
. As discussed above, the approach — as applied to a product design of a competitor — raises concerns. The VOLA is famous, and its distinctive qualities may be lessened because its market may now be flooded by a competitor with enormous market power. The VOLA could have been pro-tectable by a design patent of limited duration. Here, if Lund ultimately succeeds, the law entities Lund to patent-like protection against competitors copying the VOLA's design, even where there is insufficient likelihood of confusion.
. The
Clinique
court did not include "predatory intent” as a factor.