Thompson Medical Co., Inc. v. Pfizer Inc.
| Decision Date | 11 January 1985 |
| Docket Number | No. 441,D,441 |
| Citation | 753 F.2d 208,225 USPQ 124 |
| Parties | THOMPSON MEDICAL COMPANY, INC., Plaintiff-Appellee, v. PFIZER INC., Defendant-Appellant. ocket 84-7761. |
| Court | U.S. Court of Appeals — Second Circuit |
Thomas C. Morrison, New York City (Eugene Gelernter, Patterson, Belknap, Webb & Tyler, Stanley M. Grossmann, New York City, Pfizer Inc., of counsel), for defendant-appellant.
Patricia Hatry, New York City (Howard Peck, Jeffrey Katz, Davis & Gilbert, New York City, of counsel), for plaintiff-appellee.
Before IRVING R. KAUFMAN, TIMBERS and NEWMAN, Circuit Judges.
Although the aches and pains derived from physical activity have always been part of our American heritage, only recently have they become fashionable and profitable.
In the spring of 1982, Thompson Medical Company ("Thompson") introduced "Sportscreme," a topical analgesic designed to relieve the muscle soreness associated with sports activities. Two years later, in the spring of 1984, Pfizer Inc. ("Pfizer") introduced a similar product, "BEN-GAY SportsGel," which was also targeted specifically at the "weekend athlete." On August 16, 1984, Thompson filed suit in the United States District Court for the Southern District of New York, pursuant to Section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982), seeking a preliminary injunction against Pfizer's further use of the name "SportsGel." Judge Griesa, finding a likelihood of confusion between "Sportscreme" and "BEN-GAY SportsGel," granted the preliminary injunction. He based his decision solely on the similarity of the marks and Thompson's priority of use.
Because the court below did not address the question whether "Sportscreme" was a protectible mark, and failed to examine the strength of "Sportscreme," the proximity of the marks, the sophistication of topical analgesic consumers, and Pfizer's intent in selecting its mark, we vacate the order granting the preliminary injunction and remand the case for further proceedings.
Suits for trademark infringement demand a "comprehensive analysis of all the relevant facts and circumstances." See Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 968-69 (2d Cir.1981). Accordingly, we set forth the facts giving rise to the dispute in some detail.
Thompson's "Sportscreme"
Thompson, a New York corporation, is this nation's second-most successful manufacturer of topical analgesic rubs. 1 To capitalize on the fitness craze of the past decade, Thompson, in 1979, conceived of "Sportscreme," a topical analgesic directed at the growing group of "weekend warriors," those sedentary individuals who engage in sporadic physical activity and are thus particularly susceptible to muscle pain and soreness.
After selecting the name "Sportscreme," Thompson conducted two trademark searches, which revealed that the word "sports" was used in connection with a variety of products. From late 1979 until "Sportscreme's" launch in February 1982, Thompson engaged in concept development and product formulation, and prepared testing, trade and consumer programs. Sales to consumers began in April 1982.
Patently aware of Pfizer's dominant position in the topical analgesic market, Thompson embarked on an extensive and intensive advertising campaign to promote and publicize "Sportscreme." With total expenditures in excess of $3 million, Thompson employed electronic and print media to reach the "weekend athlete." To this end, "Sportscreme" advertisements were aired on ESPN (a cable television sports network) and carried in Runner magazine. Among the messages conveyed by Thompson was that unlike "smelly BEN-GAY," "Sportscreme," with its aromatic scent, leaves its users smelling "nice and clean." "Sportscreme" samples were distributed without charge at swimming, biking, golfing and triathlon competitions.
The success of this advertising campaign was manifested by "Sportscreme's" steadily increasing sales volume and market share. From April to November of 1982, retail sales of "Sportscreme" totalled $700,000; in the fiscal year ending November 30, 1983, sales rose to $1.2 million; and for the fiscal year ending November 30, 1984, retail sales revenues were projected at more than $2.5 million. Indeed, within an eighteen month period, "Sportscreme's" market share had increased from 0.8% to 4.2%.
Pfizer's "BEN-GAY SportsGel"
Pfizer, a Delaware corporation with its principal place of business in New York, is a major manufacturer of pharmaceutical products, and is the nation's leading producer of topical analgesic rubs. Since acquiring the assets of Bengue, Inc. in 1964, Pfizer has enjoyed a 40% share of the topical analgesic market.
For more than three-quarters of a century, Pfizer's BEN-GAY was typically purchased and used by arthritis sufferers and persons afflicted with ordinary muscle aches. But as Americans became more interested in fitness, the universe of consumers to which topical analgesic rubs could be marketed exploded. This potential source of market expansion was not overlooked by Pfizer executives. Beginning in 1981, BEN-GAY's advertising campaign assumed a physical-fitness orientation, with major sports figures extolling the virtues of BEN-GAY. A by-product of this advertising was to inculcate in millions of American weekend athletes an understanding of the therapeutic effects of topical analgesics.
In 1976, Pfizer contemplated introducing a new line of BEN-GAY products aimed specifically at the sports-active consumer. Although the seeds of the so-called "BEN-GAY Sports Stick" were sown in 1976, preliminary testing from 1977 to 1979 delayed its introduction, and manufacturing complications ultimately forced Pfizer to abandon the stick formulation entirely. Buoyed by the sales increase generated from its sports-related advertising campaign, Pfizer remained determined to capitalize fully on the nation's physical fitness trend.
Consequently, in the fall of 1983, Pfizer decided to reposition the existing BEN-GAY gel formulation as a sports product, stressing its value to persons who engage in sports activities, while simultaneously deemphasizing its ability to relieve minor arthritis pain. The product was named "BEN-GAY SportsGel." Thomas Laughlin, a group marketing director for BEN-GAY products, testified that the name was selected because it concisely and accurately described the product: a BEN-GAY gel product for use by sports participants. Laughlin explained that the name "BEN-GAY SportsGel" was the natural derivative of its abandoned predecessor, "BEN-GAY Sports Stick."
Pfizer's lawyers then commissioned a trademark search that uncovered, in addition to "Sportscreme," a litany of marks using the word "sports" in connection with closely related products--Sports-Rub, Sports Balm, Sport Cream, Sport Lotion, Sport Oil, etc. There were also pending trademark applications for two topical analgesic rubs that would compete directly with "BEN-GAY SportsGel," called SportsRub and Sports Ice. After reviewing this data, Pfizer's in-house trademark lawyer, William Goebelbecker, concluded that Pfizer was "reasonably safe" in adopting the name "SportsGel."
Armed with a name and a product, Pfizer next devised a comprehensive packaging strategy. "BEN-GAY SportsGel," like the other BEN-GAY tube products (and like "Sportscreme"), was packaged in standard 1 1/4 and 3 ounce containers. And like all products in the BEN-GAY "family," the "SportsGel" container prominently displayed the BEN-GAY logo (emblazoned in red) and the traditional diagonal stripes in three shades of the same color. The package's red, white and blue color scheme was selected for its "bright, bold, patriotic" qualities. The dominant colors on the "Sportscreme" container were yellow and green.
Both Thompson's "Sportscreme" and Pfizer's "BEN-GAY SportsGel" utilized a "fifth panel," a riser that extends from the back of the box and is believed to enhance a product's saleability, particularly during the period of its introduction. Before determining the precise packaging configuration, Pfizer conducted a cost-benefit analysis to determine the financial efficacy of utilizing a fifth panel. In light of Pfizer's desire not to advertise "BEN-GAY SportsGel" independently from other products in the BEN-GAY line, the marketing benefits to be derived from the more costly configuration were predicted to exceed the added expense. These calculations proved to be correct. "BEN-GAY SportsGel" was introduced in the spring of 1984, and after just two and one-half months, sales had exceeded one million dollars.
On August 16, 1984, three months after "BEN-GAY SportsGel" had been introduced and full national distribution was under way, Thompson filed suit in the United States District Court for the Southern District of New York, pursuant to Section 43(a) of the Lanham Act, seeking a preliminary injunction against Pfizer's continued use of the name "SportsGel." A two-day hearing was conducted by Judge Griesa on August 30 and 31, 1984.
On August 31, Judge Griesa delivered an oral opinion from the bench. Describing the case as a "close one," the district judge found that Thompson's survey purportedly establishing actual confusion among consumers, 2 was so replete with testing flaws as to be "of limited utility," and that the "BEN-GAY SportsGel" and "Sportscreme" packages are "strikingly different" in their "essential features." Nevertheless, Judge Griesa granted the preliminary injunction. His conclusion that the name "SportsGel" infringed Thompson's use of "Sportscreme" was based upon the similarity of the marks and Thompson's priority of use. He failed, however, to address whether Thompson's mark was protectible. Neither did he evaluate the strength of "Sportscreme," the proximity of the marks, the sophistication of topical analgesic consumers, or Pfizer's intent in selecting its mark. This appeal followed.
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