Conopco, Inc. v. May Department Stores Co.
46 F.3d 1556 (1994)
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Rule of Law:
A private label product that imitates the trade dress of a competing national brand does not infringe under the Lanham Act if the private label prominently displays its own well-known logo, thereby negating a likelihood of consumer confusion as to the product's source.
Facts:
- In 1986, Conopco, Inc., maker of Vaseline Intensive Care Lotion (VICL), decided to relaunch the product with a new formula, bottle shape, and label to enhance its therapeutic image and compete against private label brands.
- Conopco developed a new, less greasy formula by combining isoparaffin and DEA-cetyl phosphate and filed a patent application for it.
- By the fall of 1989, Conopco began shipping the relaunched VICL product and invested over $37 million in advertising and promotion.
- In January 1989, The Benjamin Ansehl Co., a private label manufacturer, learned of Conopco's relaunch plans.
- Ansehl, in collaboration with container manufacturer Kessler Containers Ltd. and retailer Venture Stores, Inc., developed a competing private label lotion product.
- The private label product featured a container and labelling designed to be similar to Conopco's relaunched VICL.
- Shortly after Conopco's relaunch, Ansehl began marketing its competing product through retailers, including Venture, where it was sold alongside VICL.
- On July 3, 1990, Conopco's patent on the new lotion formula was issued.
Procedural Posture:
- Conopco, Inc. filed a lawsuit against The May Department Stores Co. and others in the U.S. District Court for the Eastern District of Missouri.
- The complaint alleged patent infringement, trademark infringement, trade dress infringement under the Lanham Act, and several state law claims.
- Prior to trial, the District Court dismissed Conopco's state law claims.
- Following a bench trial, the District Court found in favor of Conopco on all its federal claims, concluding that the defendants had willfully infringed Conopco's patent, trademark, and trade dress rights.
- The District Court awarded an injunction, a product recall, enhanced damages of over $2.6 million, prejudgment interest, and attorney fees.
- The defendants (May, Venture, Ansehl, and Kessler) appealed the judgment to the U.S. Court of Appeals for the Federal Circuit, and Conopco cross-appealed the dismissal of its state law claims.
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Issue:
Does a private label product that copies the trade dress of a national brand competitor constitute trade dress infringement under the Lanham Act when the private label product prominently displays its own well-known brand logo?
Opinions:
Majority - Plager, J.
No, a private label product that copies a competitor's trade dress does not infringe when the prominent display of its own well-known logo prevents a likelihood of consumer confusion. On the trade dress claim, the court found no infringement. For monetary relief, Conopco failed to prove actual confusion, as the testimony of one confused consumer was an isolated and atypical incident, and there is no legal basis in the Eighth Circuit to presume actual confusion from an intent to copy. For injunctive relief, the district court's finding of a likelihood of confusion was clearly erroneous. The court failed to give proper weight to the most probative factor: the prominent placement of Venture's own distinct and well-known logo on its product. This prominent branding, combined with the lack of evidence of actual confusion despite years of side-by-side competition, dispels any likelihood of confusion as to the product's source, even where there is similarity and an intent to copy. The court also reversed the trademark infringement finding, reasoning that using Conopco's marks in a 'compare to' statement alongside Venture's own prominent logo constituted permissible comparative advertising. Finally, the court reversed the finding of patent infringement for the 162.9:1 ratio formulation, holding that the claim term 'about 40:1' could not be stretched to cover such a large variance, and the doctrine of equivalents could not be used to erase a meaningful claim limitation.
Concurring-in-part-and-dissenting-in-part - Mayer, J.
Yes, such conduct can constitute trade dress infringement, and the district court's finding of liability should have been affirmed. The majority impermissibly reweighed the evidence and intruded upon the fact-finding role of the trial court. The district court properly applied the six-factor test for likelihood of confusion and its findings—that Conopco's marks were strong, the products were extremely similar, and defendants intentionally copied the VICL trade dress—were amply supported by the record and not clearly erroneous. These findings are sufficient to support the conclusion that a likelihood of confusion exists. The majority improperly substituted its own judgment by giving dispositive weight to the presence of the Venture logo, contrary to the detailed findings of the trial judge who heard the evidence, including expert testimony on consumer behavior.
Analysis:
This decision provides significant legal protection for retailers marketing private label or 'store brand' products. It establishes that mimicking the 'get-up' or trade dress of a popular national brand is permissible so long as the retailer's own well-known branding is prominently displayed, which the court sees as sufficient to prevent consumer confusion. The ruling makes it more difficult for national brand manufacturers to win trade dress infringement cases against store brands that are sold side-by-side in the same retail environment. It prioritizes the clear labeling of the product's source (the store's logo) over other factors like intentional copying and similarity of appearance in the likelihood of confusion analysis.
