Procter & Gamble Co. v. Johnson & Johnson Inc.
205 U.S.P.Q. (BNA) 697, 485 F. Supp. 1185, 1980 U.S. Dist. LEXIS 11946 (1980)
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Rule of Law:
Sporadic, nominal, and non-commercial use of a trademark, conducted solely as part of a maintenance program to reserve rights in the mark, is insufficient to establish or maintain enforceable trademark rights. Furthermore, infringement of an established mark on a non-competing product requires a likelihood that an appreciable number of consumers will be confused as to the product's source, determined by a multi-factor analysis.
Facts:
- In 1964, Procter & Gamble (P&G) acquired the trademark 'Sure' and registered it for tampons, while also developing what would become its 'Sure' antiperspirant.
- In 1970, P&G acquired the trademark 'Assure' for mouthwash and shampoo to eliminate potential conflicts with its 'Sure' mark.
- P&G launched its 'Sure' antiperspirant nationally in 1973, which became a highly successful product supported by approximately $100 million in promotion.
- P&G never commercially marketed tampons under the 'Sure' brand or any products under the 'Assure' brand; instead, it maintained these registrations through a 'minor brands program' involving token, annual shipments of products, sometimes manufactured by competitors and repackaged under P&G's labels.
- Beginning in the mid-1970s, Personal Products Company (PPC), a Johnson & Johnson subsidiary, developed a new tampon and, after extensive consumer testing, selected the name 'Assure!'.
- PPC was aware of P&G's registrations but conducted an investigation and concluded that P&G's marks were not actively used in commerce and therefore did not present a legal obstacle.
- PPC later developed a thin maxi-pad and, after similar market research and consumer testing, selected the name 'Sure & Natural'.
- PPC began test-marketing the 'Assure!' tampon in 1978 and the 'Sure & Natural' maxishield in late 1979.
Procedural Posture:
- In June 1978, Personal Products Company (PPC) initiated a cancellation proceeding in the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board, seeking to cancel Procter & Gamble's (P&G) registration for 'Sure' for tampons.
- On November 22, 1978, P&G filed an action for trademark infringement and other claims against PPC's parent, Johnson & Johnson, in the U.S. District Court (the court of first instance).
- While the district court action was pending, the Trademark Trial and Appeal Board granted a default judgment in favor of P&G in the cancellation proceeding due to PPC's failure to prosecute.
- During the district court trial, P&G amended its complaint to add claims against PPC's newly launched 'Sure & Natural' product.
- In response, PPC amended its pleadings in the district court to seek review of the Board's default judgment and to request cancellation of P&G's 'Sure' for tampons and 'Assure' registrations.
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Issue:
Do the trademarks 'Assure!' for a tampon and 'Sure & Natural' for a maxi-shield infringe upon Procter & Gamble's 'Sure' trademark for antiperspirant and its registered but minimally used 'Sure' for tampons and 'Assure' for mouthwash and shampoo marks?
Opinions:
Majority - Leval, District Judge
No. The trademarks 'Assure!' and 'Sure & Natural' do not infringe upon P&G's marks because there is no likelihood of consumer confusion with the 'Sure' antiperspirant brand, and P&G failed to establish valid, enforceable rights in its 'Sure' for tampons and 'Assure' for mouthwash/shampoo marks due to a lack of bona fide commercial use. Regarding the infringement claim for 'Sure' antiperspirant, the court applied the nine-factor test from Polaroid Corp. v. Polarad Electronics Corp. and found that the balance of factors favored PPC. The court reasoned that P&G's 'Sure' mark is suggestive but inherently weak; the marks are dissimilar in their overall presentation and packaging; P&G is highly unlikely to 'bridge the gap' by using the 'Sure' name on a tampon; and there was no evidence of actual consumer confusion. The court also found that PPC acted in good faith, relying on its own product quality and not attempting to trade on P&G's reputation. Regarding P&G's 'minor brands,' the court, following La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc. (the Snob case), held that P&G's maintenance program did not constitute bona fide use in commerce. The annual shipments were nominal, sporadic, and solely intended to reserve rights, not to establish a genuine trade. Trademark rights arise from actual use, not from mere adoption and a token maintenance program. Therefore, P&G had no enforceable rights in the 'Sure' tampon and 'Assure' marks to assert against PPC.
Analysis:
This case provides a significant clarification of the 'use in commerce' requirement for maintaining trademark rights, strongly rejecting the practice of 'trademark warehousing.' It follows the precedent of the Snob case to establish that minimal, token sales programs designed only to reserve a mark for future use are insufficient to create or preserve enforceable rights. The opinion also serves as a classic application of the Second Circuit's multi-factor Polaroid test for likelihood of confusion between non-competing goods. The decision signals to brand owners that rights cannot be indefinitely warehoused without genuine commercial activity and that even strong marks for one product may have limited power to block similar names for products in different market categories.
