Wednesday, January 9, 2008

Proctor & Gamble Sues Private-label Distributor for Trade Dress Infringement over Herbal Essences

The Procter & Gamble Company ("P&G") has a history of aggressively enforcing its trademark and trade dress rights, especially against companies that create and distribute "private-label" products to retailers that are meant to compete with P&G products. In May 2006, P&G sued two companies – a private label distributor and a company selling its own products under its name to retailers – for trade dress infringement, trademark infringement, and unfair competition over such P&G brands as Herbal Essences Fruit Fusions, Secret, Old Spice, Red Zone, High Endurance, Pantene, Head & Shoulders, Pert Plus, and Crest Pro-Health. See Procter & Gamble Company v. Cumberland Swan Holdings, Inc., Case No. 06-CV-00255 (S.D. Ohio); The Procter & Gamble Company v. Percara Enterprises, Inc., Case No. 06-CV-01070 (N.D. Ohio). In August 2006, P&G sued a private label manufacturer of beauty products for trade dress, trademark and patent infringement involving P&G’s OLAY skin care line of beauty products. See Proctor & Gamble Company v. Perrigo New York Inc., Case No. 06-CV-00234 (S.D. Ohio). In September 2006, P&G sued a company that manufactured and distributed health and beauty private label products to retailers for trade dress and trademark infringement over such P&G brand products as SECRET, OLD SPICE, RED ZONE, and HIGH ENDURANCE. See The Procter & Gamble Company v. Davion, Inc., Case No. 06-CV-04189 (D. N.J.).

While 2007 was a slow-year for P&G with no trademark/trade dress infringement suits filed by the company, P&G is now off and running with its latest lawsuit against a California private-label product company that distributes private-label shampoo and conditioner products that P&G claims infringes on the trade dress of P&G’s Herbal Essences brand shampoos and conditioners.

On January 7, 2008, P&G filed a trademark infringement lawsuit in the United States Federal District Court for the Southern District of Ohio against Blue Cross Laboratories ("Blue Cross"). See Procter & Gamble Company v. Blue Cross Laboratories, Case No. 1:08-CV-00018 (S.D. Ohio). A copy the complaint (including exhibits) can be downloaded here (courtesy of me). P&G’s press release announcing the lawsuit can be read here.

This is not the first time P&G and Blue Cross have crossed paths over look-alike private-label products. As alleged in the complaint, "Blue Cross bases a substantial components of its business on imitations of P&G’s products. Blue Cross has sold its products in packaging that copies most or all of the key elements of P&G’s packaging so as to convey an overall impression of the same or a closely related product." In 1997, Blue Cross sold a product which copied P&G’s PERT PLUS trademark and trade dress. P&G obtained an injunction against Blue Cross stopping the company from using any packaging likely to cause confusion with P&G’s PERT PLUS trade dress. In 2004, P&G once again filed a lawsuit against Blue Cross to stop the company from selling several products resembling the trade dress of P&G products such as PANTENE, NOXZEMA, PERT PLUS, HEAD & SHOULDERS, SECRET, and HERBAL ESSENCES FRUIT FUSIONS. A Final Judgment By Consent was entered into 2005 whereby Blue Cross agreed to stop using the infringing packaging.

In the current lawsuit, the issue is over P&G’s Herbal Essences brand of shampoo and conditioner, in particular, the unique shape of the Herbal Essences bottles that P&G is claiming as distinctive trade dress.

According to the complaint, P&G acquired the rights to the HERBAL ESSENCES brand of hair care products (along with the intellectual property and goodwill associated with the products) when it acquired Clairol, Inc. back in 2001. P&G owns several registrations for the mark HERBAL ESSENCES (including one for hair shampoo and conditioner) as well as a registration for the mark FRUIT FUSIONS (for shampoos, conditioners, detanglers, and styling gels).
In 2006, P&G reintroduced a new line of HERBAL ESSENCES products with a "unique and distinctive trade dress" (pictured above). As described in the complaint, the unique and distinctive elements of P&G’s Herbal Essence trade dress are:

(a) a bottle with a sinuous shape featuring unexpected and asymmetrical curves; (b) the product brand name on the front label in white painting; (c) a holograph device or metallic printing on the top portion of the label; and (d) a vinelike or organic device on the top portion of the label.

In response to P&G’s new HERBAL ESSENCES products and distinctive packaging, Blue Cross began selling shampoo and conditioner products labeled HERBAL PASSION. The packaging used by Blue Cross (pictured below) is clearly intended to resemble P&G’s HERBAL ESSENCES trade dress:

In addition to Blue Cross’s packaging being confusingly similar to P&G’s trade dress, P&G alleges that Blue Cross is using the FRUIT FUSION registered trademark on one of its Herbal Passion rich volumizing shampoo products.

Before filing the lawsuit, P&G sent Blue Cross a cease and desist letter. Blue Cross’s counsel responded that Blue Cross had ceased shipping the product, a recall of the product had been completed, and that further information about its distribution of the Herbal Passion products would be provided. Subsequently, according to the complaint, P&G discovered Blue Cross’ Herbal Passion shampoo and conditioner still be sold at Dollar Tree stores in Ohio and continue to be offered by at least one online distributor of Blue Cross products -- The Better Choice Enterprises, Inc. (a.k.a. Concord). P&G also claims that Blue Cross has failed to provide the information it promised.

P&G’s causes of action are for federal unfair competition (trade dress infringement) under §43(a) of the Lanham Act (15 U.S.C. §1125(a)), trademark infringement for infringing use of the registered mark FRUIT FUSION under §32 of the Lanham Act (15 U.S.C. §1114), and deceptive trade practices under Ohio law (Ohio Rev. Stat. §4165.02(A)(2) and (3)).

P&G is seeking an injunction against Blue Cross to stop the company from using any packaging similar to P&G’s trade dress for Herbal Essences. P&G also wants Blue Cross to notify customers that they are not to sell the infringing products and that any such products be impounded or returned to Blue Cross. Finally, P&G seeks Blue Cross’ profits, treble damages, costs, and attorney’s fees.

P&G’s chief legal officer, Jim Johnson, stated "We believe this is a clear case of infringement designed to take advantage of consumer loyalty and business growth that P&G developed through the reinvention of its Herbal Essences brand. This is a serious case of trade dress infringement, and we are asking the court to stop the distribution of these products to protect the equity and intellectual property of the Herbal Essences brand."

Need to take a second look?

I wish the complaint had included pictures of Blue Cross' conditioner to see if it had a similar look at P&G's conditioner. Herbal Essences shampoo and conditioner have a yin-yang shape when put side-by-side. It would have been even stronger evidence of a distinctive trade dress and that Blue Cross is infringing upon it.

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