Procter & Gamble Co. v. Ultreo, Inc.

• Decision Date: 28 August 2008
• Docket Number: No. 07 Civ. 8379 (RJS).,07 Civ. 8379 (RJS).
• Citation: 574 F.Supp.2d 339
• Parties: The PROCTER & GAMBLE COMPANY, Plaintiff, v. ULTREO, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

574 F.Supp.2d 339

The PROCTER & GAMBLE COMPANY, Plaintiff, v. ULTREO, INC., Defendant.

No. 07 Civ. 8379 (RJS).

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

August 28, 2008.

COPYRIGHT MATERIAL OMITTED

Harold Keith Gordon, Esq., Theresa M. Gillis, Esq., and Laura W. Sawyer, Esq., Jones Day, New York, NY, and Danielle M. Hohos, Esq., and John B. Williams, Esq., Washington, DC, for Plaintiff The Procter & Gamble Company.

Anthony DiSarro, Esq., and Lina M. Viviano, Esq., Winston and Strawn LLP, New York, NY, Kimball Richard Anderson, Esq., Lisa J. Parker, Esq., and Stephen P. Durchslag, Esq., Winston and Strawn LLP, Chicago, IL, and Marc C. Levy, Esq., Faegre & Benson LLP, Denver, CO, for Defendant Ultreo, Inc.

MEMORANDUM AND ORDER

RICHARD J. SULLIVAN, District Judge:

Plaintiff The Procter and Gamble Company ("P & G"), the manufacturer of Oral B toothbrushes and dental care products, brings this action against defendant Ultreo, Inc. ("Ultreo"), creator and manufacturer of the Ultreo toothbrush. P & G contends that Ultreo has made false and misleading advertising claims with respect to the ultrasound component of the Ultreo toothbrush. Specifically, P & G alleges (1) false advertising in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B); (2) deceptive trade practices in violation of New York's Deceptive Trade Practices Act, N.Y. G.B.L. §§ 349(a) and (h); (3) false advertising in violation of New York's false advertising statute, N.Y. G.B.L. §§ 350 and 350-a; and (4) common law claims of false advertising, unfair competition, and unfair business practices. P & G also seeks a preliminary injunction enjoining Ultreo from disseminating any "advertising, marketing, or promotional statements, whether made expressly or by implication, that the ultrasound feature of its toothbrush has any effect upon plaque removal or teeth cleaning, or that its ultrasound feature is magic or in any way falsely describing the nature of ultrasound cycles."¹ (Compl. ¶ 55.) The Court held an evidentiary hearing on December 19-20, 2007, and January 10-11, 2008. The parties submitted proposed findings of fact and conclusions of law on February 1, 2008. The parties thereafter submitted supplemental letter briefs to the Court.

The issue raised in this litigation is whether Ultreo's advertising claims are false, either impliedly or expressly, because they are not supported by an in vivo human clinical study. Because P & G demands a preliminary injunction against Ultreo's advertising, the question now before the Court is whether P & G has proven that it is likely to suffer irreparable injury and that either there is a likelihood of success on the merits or sufficiently serious questions going to the merits so as to justify a preliminary injunction. For the reasons that follow, the Court concludes that P & G has failed to demonstrate irreparable harm, and accordingly denies the motion for a preliminary injunction.

I. BACKGROUND

A. The Parties and the Premium Power Toothbrush Market

P & G and Philips, which manufactures the Sonicare line of toothbrushes, are the two dominant competitors in the premium power toothbrush market. (Randall Decl. ¶ 5.) For the year ending August 2007, the rechargeable power toothbrush market was $111.6 million in all retail outlets in the United States. (Id. at ¶ 6.) Of this market, premium power toothbrushes, which include those priced over $60, accounted for $79.8 million of these sales. (Id.) Plaintiff P & G owns and distributes the Oral B line of toothbrushes, which includes a variety of power toothbrushes. (Id. at ¶ 5.) It controls 38.2% of the market for premium power toothbrushes. (Id. at ¶ 6.) Philips manufactures and distributes the Sonicare toothbrushes. (Id. at ¶ 5.) It controls 61.2% of the market for premium power toothbrushes. (Id. at ¶ 6.)

Defendant Ultreo is a new market entrant. It manufactures and sells one product—the Ultreo power toothbrush. (Gallagher Decl. ¶ 33.) The Ultreo power toothbrush combines ultrasound technology with sonic bristle action. (Id. at ¶¶ 9-11.) The Ultreo power toothbrush entered the market in 2007 and has no market share. Ultreo projects that the company will have $7 million in sales this year; it expects to lose $14 million. (Id. at ¶ 30.) The Ultreo toothbrush features high-speed sonic action bristles, which remove plaque and create bubbles. (Id. at ¶ 46.) A transducer located within the brushhead generates ultrasound waves, which are then directed via a waveguide into the fluid located around the bristle tips. (Id. at ¶ 9; Crum Decl. ¶ 14.) These ultrasound waves cause the bubbles in the fluid environment to oscillate (that is, to move rapidly) and pulsate (that is, to increase and decrease in size.) (Gallagher Decl. ¶ 9; Crum Decl. ¶ 10.) This process, known as cavitation, has been shown in laboratory tests to remove plaque bacteria from a simulated tooth surface. (Crum Decl. ¶¶ 12-15.) This cavitation process is similar to that by which ultrasound waves are used to clean jewelry, surgical equipment, and other objects. (Id. at ¶¶ 9-11.)

B. The Advertising Claims

Ultreo advertises its product based in part on the ultrasound feature of the toothbrush. To this effect, Ultreo makes a series of claims in their advertising, website, infomercial, retail presentations, labeling on the Ultreo box, and presentations to dental professionals. P & G seeks to enjoin Ultreo from making the following claims (also described in Plaintiffs Exhibit 161).

First, P & G seeks to enjoin Ultreo from making claims that discuss bubbles and that allegedly suggest that the bubbles are able to remove plaque. (Pl.'s Exs. 59, 127A, 127C, 127F, 128.) For example, a current SkyMall listing for Ultreo states that "The sonic bristles create bubbles that pulsate at an exact ultrasonic frequency for optimal plaque removal." (PL's Ex. 59.) Ultreo's website provides links to magazine articles that make claims that "the ultrasound technology creates tiny bubbles that blast away the plaque." (Pl.'s Ex. 127C.) Finally, Ultreo's infomercial contains images of bubbles pulsating in the mouth. (PL's Ex. 128.)

Second, P & G seeks to enjoin Ultreo from making claims that discuss ultrasound and that allegedly attribute a cleaning or plaque-removal effect to the ultrasound component of Ultreo, whether alone or in combination with bristle action. For example, the Ultreo website includes the phrase, "the Ultimate Ultrasound Clean." (Pl.'s Ex. 127.) The infomercial includes the claim that while "[a] power toothbrush scrubs your teeth with brustle action, high speed bristle action . . . Ultreo does something else altogether, something more." (Pl.'s Ex. 128B at 19-20.)

Third, P & G seeks to enjoin Ultreo from making claims that Ultreo cleans or has an effect beyond the reach of actual toothbrush bristles. P & G points to a claim in a magazine article that was linked to the Ultreo website, which states that a "transducer in this device emits ultrasound waves, whipping your toothpaste into a pulsating froth of microscopic bubbles that penetrate under the gum-line and between teeth." (Pl.'s Ex. 127M.) P & G also points to language contained in a retail presentation by Ultreo that "specifically addressed the unique characteristic of [the Ultreo] cleaning the pits, fissures, interproximals . . . often where the bristles do not go—by the bubble action of the ultrasonic wave activation." (Pl.'s Ex. 51.)

Fourth, P & G seeks to enjoin Ultreo from making claims that connect the "feeling of clean" to the ultrasound or the bubbles. For example, Ultreo's packaging includes the claim that "Ultreo's bristles create microbubbles that are powerfully activated by nearly 4 million cycles of ultrasound energy per brushing channeled by a patented ultrasound waveguide. The result is an incredible, long-lasting feeling of clean." (Pl.'s Ex. 74.) Ultreo's website and infomercial contain substantively similar claims. (Pl.'s Ex. 128B at 13-14, 23.)

Fifth, P & G seeks to require Ultreo to disclose that "clinical studies show the ultrasound component of the Ultreo does not remove plaque from the teeth," or words to that effect. (Pl.'s Ex. 161.)

Sixth, P & G demands that, in connection with presentations and conversations with dental professionals, Ultreo should be directed' to provide "candid answers when asked about the absence of clinical studies." (Pl.'s Ex. 161.) Specifically, P & G asserts that Ultreo should state that "`clinical studies show that Ultreo's ultrasound component has no effect on plaque removal' or words to that effect." (Id.)

P & G's principal argument in support of these demands is that Ultreo's advertising relies on in vitro studies to support the claims. In vitro studies are studies conducted in a laboratory, rather than in the human mouth. P & G argues that Ultreo must provide in vivo support—that is, a clinical study of the toothbrush in the human mouth—to substantiate its advertising claims. P & G further argues that Ultreo's claims are disproven by both Ultreo and P & G's internal in vivo studies.

II. STANDARD OF REVIEW

A. Preliminary Injunction Standard

"A party seeking preliminary injunctive relief must establish: (1) either (a) a likelihood of success on the merits of its case or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in its favor, and (2) a likelihood of irreparable harm if the requested relief is denied." Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144, 152-53 (2d Cir.2007). These elements must be established by a preponderance of the evidence. Shred-It, USA, Inc. v. Mobile Data Shred, Inc., 202 F.Supp.2d 228, 233 (S.D.N.Y.2002) (quoting Addington v. Texas, 441 U.S. 418, 423, 99 S.Ct. 1804, 60 L.Ed.2d 323 (1979)); see also Barrack, Rodos & Bacine v. Ballon Stoll Bader & Nadler, P.C., No. 08 Civ. 2152(PKL), 2008 WL 759353, at *4-5, 2008 U.S. Dist. LEIS 22026, at *11 (S.D.N.Y...