The Trademark Blog

Glenn Mitchell, Schwimmer Mitchell's head of litigation, writes:

Procter and Gamble and its subsidiary Tambrands, manufacturer of TAMPAX tampons, have filed suit in the Eastern District of New York against First Quality Hygienic, Inc., claiming trademark and trade dress infringement of Plaintiff's federally registered PEARL and PEARL PLASTIC marks and the packaging for TAMPAX PEARL tampons, which feature a smooth tapered plastic applicator (ED: we can email you the complaint).

The complaint itself is a straight-forward complaint, identifying the elements of the trade dress and seeking relief for trade dress infringement, trademark infringement and unfair competition by use of a confusingly similar mark.

The defendant allegedly uses the terms "pearlized" and/or "pearlized plastic" on the packaging for its competing plastic applicator tampon line. Preliminary research indicates that there is somewhat common generic reference to plastic applicator tampons as "pearlized," and this may be asserted as a defense. I have no specialized knowledge in the industry to know whether this defense would have any legs.

On the trade dress side, however, it appears that the defendant is on shakier ground, as defendant is alleged to use packaging that not only replicates the colors of plaintiff's packaging (the copy of the complaint that we reviewed was in black and white), and to adorn the packaging with a curved depiction of a string of pearls, which is also featured on plaintiff's packaging. Even if the term "pearlized" is weak or generic, this packaging element would appear to be distinctive and protectible.

Without making an evaluation of the strength of plaintiff's case or arguments concerning defendant's intent, I refer you to the website of First Quality and invite you to compare and contrast the packaging (and marks) of various of its products to well-known brands.

Although, in the interests of decorum, I have avoided making any puns, at the risk of destroying such decorum, I'll suggest that we revisit the status of the case every four weeks or so.

Posted by Marty at 04:56 PM | Permalink

Wrigley has sued Cadbury in the Northern District of Illinois, over Cadbury's use of the TRIDENT E-Z Close Pack (pictured above) and DENTYNE Soft Chew Pack.

Wrigley's trade dress is described as:

'a curved edge along a face of the packaging; a half circle design on the lower portion of a face of the packaging; and the display of the product when the packaging is in an open position such that a portion of the products is visible.'

Text of complaint here.

UPDATE: Our litigation partner, Glenn Mitchell, gave the complaint a once-over and this is his reaction:

The complaint is, to put it diplomatically, minimalist, in that:

Wrigley does not identify the brand with which it uses the trade
dress;

No photos or drawings of the claimed trade dress appear in, or are referenced in the complaint;

While not strictly necessary, if one is claiming that one's trade dress has acquired distinctiveness, we would expect to some factual underpinning, in the nature of reference to sales, third party press, or specific activities calling attention to the trade dress as a source identifier (so-called "look for" advertising)

We are also struck by the fact that defendant's marks are DENTYNE
and TRIDENT, among the most famous gum trademarks in the country and we suspect, based on our vast gum-consuming experience, that the major Wrigley brand employing the claimed trade dress is ORBIT, which itself has become very well-known.

We are reminded of the EXCEDRIN PM/TYLENOL PM case (Bristol Meyers
Squibb v. McNeil ppc,973 F2d 1033 (2d Cir 1992), which held, among other things, that, even in the face of clear evidence of intentional copying, the prominent use of famous marks on the packaging may prevent confusion between otherwise similar packages.

We also did some field research, going to a candy store at lunch, to investigate point of purchase display of gum, where we observed that the packages at issue are displayed with the famous brand names on the front, and the trade dress elements in question on the back, such that they would not be visible to the consumer until picked up.

Also, we note that at least the Trident package is called the "E-Z
Close Pack," suggesting that they are promoting their packaging as functionally superior (a test run proves that this is so, particularly compared to previous TRIDENT packaging, which tended, once opened, to deposit individual sticks in whatever pocket/handbag the package was stored).

In any event, Plaintiff's argument that defendant's modification of the
packaging disproves functionality (an apparent variant of the long-since-rejected axiom that intentional copying is evidence of distinctiveness) is not self-evident - don't manufacturers desire to improve functionality?

Finally, we had Greek food for lunch (and therefore we needed some especially minty gum).

Posted by Marty at 10:28 AM | Permalink

Answer to yesterday's trade dress question here.

Original order in BOUNTY lawsuit:here.

Posted by Marty at 12:52 PM | Permalink

Trade Dress brain teaser here.

Posted by Marty at 01:47 PM | Permalink

Counterfeit Chic on the HOOTERS trade dress case (with pictures).

Posted by Marty at 10:59 AM | Permalink

Makers of REDLINE energy drink bring trade dress declaratory judgment against RED BULL. Copy of REDLINE complaint here, commentary via Nutritional and Dietary Supplement Law Blog.

Posted by Marty at 02:08 PM | Permalink

Yamaha (top) sues Yamoto for selling a 'copy cat' all terrain vehicle.  Claims apparently include trade dress.  Press release here.

Posted by Marty at 05:03 PM | Permalink