Friday, September 19, 2008

Weight Watchers Sues Campbell Soup Over Weight Watcher’s POINTS

On September 16, 2008, Weight Watchers International, Inc. (“WWI”) filed a trademark infringement lawsuit against Campbell Soup Company (“Campbell”) in the U.S. District Court for the Southern District of New York. See Weight Watchers International, Inc. v. Campbell Soup Company, Case No. 08-cv-8014 (S.D.N.Y.). A copy of the complaint can be downloaded viewed at The Trademark Blog.

WWI is famous for its diet program marketed under the WEIGHT WATCHERS mark. Since 1997, one of WWI’s diet program (the “Flex Plan”) has involved a “Points” system whereby Weight Watcher dieters are given an individual “Points” budget and all food items are assigned a particular “Points” value based on WWI’s own derived formula (pictured below).

p = Points
c = Calories
f = Fat Grams
r = Dietary Fiber Grams

WWI has even registered the mark POINTS for various goods and services including for “food nutrition consultation and advice.”
In July 2008, Campbell introduced a line of “light” soups marketed under its “Select Harvest” brand name. As part of its marketing strategy, Campbell apparently has labeled (or will be labeling) these soups with the “Weight Watcher Points” value as calculated by Campbell according to WWI’s formula. Campbell is also marketing its soups on retail store display racks and online.

Campbell attempted to protect itself by having the following disclaimer on the can’s label as well as on its website:

WEIGHT WATCHERS®, POINTS®, and POINTS VALUE® are registered trademarks of Weight Watchers International, Inc. The number of POINTS® provided here was calculated by Campbell's based on published Weight Watchers International, Inc. information and does not imply sponsorship or endorsement of such number of POINTS® or Campbell's® products by Weight Watchers International, Inc.

However, WWI is apparently unsatisfied with such a disclaimer and feels that Campbell is improperly using without authorization WWI’s trademarks and its reputation and goodwill in the weight-loss industry in order to market its Select Harvest Light product line to consumers trying to lose weight. WWI further argues that consumers are likely to be confused into believing that WWI has approved Campbell’s use of its marks on Campbell’s Select Harvest Light soup products.

WWI sent Campbell a cease and desist letter on August 13, 2008. Campbell responded to WWI’s letter on September 9, 2008, but the complaint does not provide any insight into that response. According to WWI, Campbell is already stocking grocery store shelves with its Select Harvest Light soup products having the infringing label.

WWI’s causes of action are (1) Registered Trademark Infringement under 15 U.S.C. §1114, (2) Unfair Competition/False Designation of Origin under 15 U.S.C. §1125(a), (3) Trademark Dilution under 15 U.S.C. §1125(a), (4) Common law trademark infringement, (5) Common law unfair competition, (6) Dilution under New York law, (7) Unjust enrichment, and (8) Breach of Contract.

The breach of contract cause of action relates to a February 2006 Permitted Use Agreement between WWI and Campbell to which WWI listed the POINTS values for various Campbell's products in the 2006 version of its Complete Food Companion and in WWI's food database at According to WWI, one provision in the Agreement provided that Campbell agreed not to use any of the logos, trademarks, or copyrights belonging to WWI in any advertising, packaging, public relations and promotional materials, or in any other manner other than as set forth in the Agreement. Another provision in the Agreement specifically stated that WWI’s inclusion of Campbell's products in its publication and food database was not an endorsement of Campbell's products and that Campbell may not use WWI’s trademarks to suggest any such endorsement. Campbell further agreed not use WWI’s trademarks, including the POINTS values of Campbell’s products, in any advertising or promotional materials (including online websites) or on any packaging and may not provide information to consumers about a POINTS value of its products in any manner without WWI’s express approval. The parties entered into a second Permitted Use Agreement for the 2008 version of WWI's Complete Food Companion, whereby Campbell agreed not to use WWI’s trademarks in a manner that would create a likelihood of confusion as to the source of any products or services or as to the sponsorship or endorsement of any products or services. WWI claims that Campbell’s use of its trademarks is in breach of these agreements.

In addition to seeking injunctive relief, WWI requests damages in the amount of Campbell’s profits, treble damages, attorneys' fees and costs, and punitive damages.

No comments: