It’s a 10, Inc. v. Beauty Elite Grp., 2013 WL 6834804 (S.D. Fla. Dec. 23, 2013).

A Florida district court granted in part and denied in part the defendant’s motion for summary judgment in an action alleging, among other things, trademark and trade dress infringement.

Here, the plaintiff It’s a 10, Inc. sells hair-care products and owns the marks IT’S A 10 and MIRACLE LEAVE IN PRODUCTS. One of the plaintiff’s popular products is the “It’s a 10 Miracle Leave In Product,” which is a hair-care product intended to repair damage, add shine, and stop hair breakage. The plaintiff packages its product in a violet bottle with white font and a magenta spray nozzle.

The defendant Beauty Elite Group, Inc. makes a hair-care product called “Sosilk 10 PL-US Miracle Leave-In Treatment” which is intended for substantially the same uses as the plaintiff’s product. The defendant initially packaged its product in a violet bottle with white font and a magenta spray nozzle, in the same color scheme as the plaintiff’s bottle.

This similar packaging coupled with the similar name of the defendant’s product prompted the plaintiff to file a trademark and trade dress infringement action against the defendant in early 2013. Two weeks after the plaintiff filed the action, however, the defendant informed the plaintiff that it would sell its product in a new, different bottle and that it would cease usage of the old bottle. The defendant’s new bottle consists of a white bottle with a deeper magenta label and spray nozzle and white font. The defendant also removed the word “miracle” from its product name.

Pointing to the promise to cease usage of the old bottle which prompted this infringement action, the defendant moved for summary judgment. The court separated the infringement analysis, analyzing the old and new bottles separately.

As to the defendant’s new bottle, the court held that the marks and the packaging appeared sufficiently dissimilar from the plaintiff’s product that there was no longer a likelihood of confusion among the marks and the trade dress, and the court granted the defendant summary judgment as to both the trademark and trade dress infringement claims.

However, the court held that with respect to the old bottle, there was sufficient evidence of likelihood of confusion to preclude summary judgment. Specifically, the strength of the plaintiff’s marks and bottle design, the “striking” similarity of the parties’ marks and bottles, the functionally identical uses of the parties’ products, and the similarity of the parties’ marketing channels all support the plaintiff’s claims of trademark and trade dress infringement. Thus the court denied the defendant summary judgment and allowed the case to proceed as to the defendant’s old bottle.

For now, It’s a 10 wins by a hair.