Procter & Gamble Co. v. Johnson & Johnson Inc.

• Decision Date: 22 January 1980
• Docket Number: No. 78 Civ. 5638(PNL).,78 Civ. 5638(PNL).
• Citation: 485 F. Supp. 1185
• Parties: The PROCTER & GAMBLE COMPANY, Plaintiff, v. JOHNSON & JOHNSON INCORPORATED and Personal Products Company, Defendants.
• Court: U.S. District Court — Southern District of New York

485 F. Supp. 1185

The PROCTER & GAMBLE COMPANY, Plaintiff, v. JOHNSON & JOHNSON INCORPORATED and Personal Products Company, Defendants.

No. 78 Civ. 5638(PNL).

United States District Court, S. D. New York.

December 28, 1979.

Supplemental Findings January 22, 1980.

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Brooks, Haidt, Haffner & Delahunty, by G. Thomas Delahunty, New York City, and Thomas S. Calder and John J. Cummins, Cincinnati, Ohio, for plaintiff.

Patterson, Belknap, Webb & Tyler, by Thomas C. Morrison, New York City, Michael J. Ryan, Jr., New Brunswick, New Jersey, and Christine H. Miller, New York City for defendants.

LEVAL, District Judge.

I. Introduction.

This is an action for trademark infringement, false designation of origin, unfair competition and trademark dilution.¹ The plaintiff, Procter & Gamble Co. ("P&G"), an Ohio corporation, is one of the country's largest manufacturers of household and personal use products. The defendants are Johnson & Johnson Incorporated ("J&J") and its wholly-owned subsidiary Personal Products Company ("PPC"), both New Jersey corporations. PPC is the leading manufacturer of women's external menstrual protection products. The case raises interesting questions.

The defendants' trademarks which are alleged to infringe rights of the plaintiff are "Assure!" as used on a woman's menstrual tampon, and "Sure & Natural", as used on an external menstrual protection shield.

The plaintiff's marks alleged to be infringed are "Sure" for an underarm antiperspirant deodorant and for a woman's tampon, and "Assure" for a mouthwash and a shampoo.

Plaintiff seeks damages and injunctive relief. Defendants deny plaintiff's allegations and seek an order directing the cancellation of P&G's registration of the Sure tampon and Assure mouthwash and shampoo trademarks.²

Trial consumed 16 days and was completed last Thursday, December 20. For reasons of commercial urgency, the parties have requested a speedy decision.

I congratulate counsel on both sides for careful preparation and skillful presentation of their contentions.

II. Facts.

The history of the development of the controversy is as follows.

a. P&G'S Establishment of its Marks.

In 1964 P&G acquired the trademark "Sure" for a personal deodorant from a prior owner. At the time P&G considered using the mark on two different products which it had in development. One was an anti-perspirant underarm deodorant which eventually entered test market in 1972 bearing the name "Sure" and which has since established itself as one of the best selling anti-perspirants in the country. The other was a woman's tampon which was to be P&G's first entry into the woman's sanitary protection field. Accordingly, P&G applied in 1964 for a federal trademark registration for "Sure" for tampons. As a deodorant mark, "Sure" was already registered by the predecessor.

P&G encountered clouds and potential obstacles to its use of the mark. Litigation with one adverse claimant was settled in 1968, following which the registration of "Sure" for tampons was granted by the patent office. In 1970, P&G succeeded in removing another potential cloud by buying from its owner the mark "Assure" which was registered for use on a mouthwash and a shampoo.

Also in 1970, P&G won a favorable resolution of a lawsuit brought by the manufacturer of a competing deodorant Arrid which sought to prevent P&G's use of "Sure" on the deodorant by reason of trademark rights in Arrid's advertising slogan "Use Arrid, to be sure". Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794 (9 Cir. 1970).

The anti-perspirant was ready for test marketing far in advance of the tampon. It was given the name Sure Anti-perspirant Deodorant and entered test market in 1972; it went national in 1973. Since it was introduced, over 300 million units have been sold bringing revenues to P&G of approximately $300,000,000. P&G has spent approximately $100,000,000 on the promotion of the product.

In 1974, P&G's tampon was ready to enter test market. The name Sure was not adopted. The name chosen was Rely. The marketing of Rely has expanded from year to year to the point that it is now sold in approximately two-thirds of the United States, including substantially all but the northeast.

Sure for tampons, since 1964, and Assure for mouthwash and shampoo, since 1970, have been carried by P&G in its "minor brands program". The minor brands program is designed by P&G to establish and maintain ownership rights over trademarks which have not been assigned by P&G to any commercially marketed product. One of the most hotly contested issues in this lawsuit is the legal effectiveness of this program to maintain ownership rights in the Assure and Sure-for-tampon marks for ten and sixteen years respectively.

b. J&J's Establishment of its Marks.

Assure! Natural Fit Tampon.

For many years J&J's subsidiary PPC has been the country's leading manufacturer of women's external sanitary protection devices which have included the brand names Modess, Carefree and Stayfree. Although there was at one time a Modess tampon, it was not commercially successful; PPC has never successfully marketed a tampon. The tampon market has for many years been dominated by Tampax.

Since the early 1970's PPC has had under development a tampon, the subject of this lawsuit, which claims important technological improvements over prior products. The product development project was named Apex. The tampon eventually acquired the name Assure! Natural Fit Tampon. The principal technological improvements claimed have to do with high absorbency fibres and radial expansion. (The Tampax tampon expands in length, rather than radius, as it absorbs fluid). The Assure tampon also carries a deodorancy feature consisting of a masking fragrance, which was added to the product in 1976. During the 1970's other tampons have been introduced which involve the use of highly absorbent fibres and radial expansion; these include P&G's Rely, and Playtex. PPC's parent J&J markets a radially expanding tampon under the name "o.b." PPC claims superiority to its competitors' products on the grounds that while the competitors' expand outward only at the upper end, Assure expends radially throughout its length assuring a better fit, better protection against leakage and greater comfort. Assure, Rely and Playtex are expected to compete with one another to seek to take away from Tampax a share of its market dominance.

During the mid-1970's PPC searched extensively for an appropriate name for its product. Hundreds of names were considered and nearly twenty were tested for consumer reaction by market research specialists. PPC was interested in a name which would evoke confidence in the additional protection against leakage offered by the radial expansion technology. It was impressed with the name Rely which P&G had chosen for similar reasons.

The name Assure was first considered in 1974. A Miss Aikman, who was then in charge of the product's development at PPC, requested the office of legal counsel to ascertain the availability of the name. In response Michael J. Ryan, trademark counsel of J&J, commissioned a search of the trademark register. The trademark search revealed the existence of P&G's registration of the Sure mark for tampons as well as Sure for deodorant. On this basis Ryan furnished a standard-form provisional opinion stating that Assure "appears to be not available and registerable at this date." This was one of hundreds of routine requests of this nature handled annually by Ryan's office. It was one of many such requests emanating from the Apex project. Ryan's opinion was provisional and qualified by the word "appears". It was based solely on the face of the trademark register. Aikman apparently was aware of the existence of P&G's minor brand Sure tampon, as a packet of Sure tampons was found in her credenza by her successor.

In 1974 Mary McGuire took over responsibility for the development of the Apex Project at PPC. Consumer testing of the product at that time convinced McGuire that it was not ready for market. PPC had no prior experience with the use of superabsorbent fibres. The product did not work satisfactorily. Accordingly she directed her attention for nearly two years to the improvement of the technology. The process was expensive, laborious and time-consuming. When the product had been substantially improved, it was tested for consumer preference against Playtex's radially expending deodorant tampon. The testing indicated that consumers favored a product carrying a fragrance. Accordingly, a fragrance was added to PPC's tampon. During McGuire's first two years on the project, little attention was given to the problem of naming as her primary attention was focussed on product improvement.

In the second half of 1976 attention returned to the naming problem. A large number of names was under consideration and many were submitted to Ryan for a routine check of the trademark register. Among them once again was the name Assure, no one remembering that it had been checked in 1974. Ryan again commissioned a trademark search. He delivered a second tentative opinion again stating the conclusion that the name appeared to be unavailable based on P&G registrations for Sure tampons and Assure shampoo.

In the fall of 1976 PPC conducted extensive name testing among consumers. The name "Assurance Plus" tested extremely well. Furthermore, it carried connotations which McGuire and her superiors considered desirable for the product. McGuire did not like the name because it was too long. Attention returned to the name Assure.

P&G was not known to be marketing either a Sure tampon or any product under the Assure label. Accordingly, Ryan was instructed to investigate further the legal availability of the name to determine whether the P&G registrations represented marks which were actively used in commerce, or whether the marks...