Warner-Lambert Co. v. Breath Asure Inc.
204 F.3d 87, 2000 U.S. App. LEXIS 1667, 53 U.S.P.Q. 2d (BNA) 1727 (2000)
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Rule of Law:
When a competitor's product name is literally false, a plaintiff seeking an injunction under the Lanham Act is entitled to a presumption of likelihood of injury and does not need to provide extrinsic evidence of consumer deception or lost sales.
Facts:
- Warner-Lambert Company manufactures and sells well-known breath freshening products, including Certs, Clorets, Listerine, and Dentyne.
- BreathAsure, Inc. markets ingestible capsules named "BreathAsure" and "BreathAsure-D" as breath fresheners.
- BreathAsure heavily advertised its products as being superior to gums, mints, and mouthwash because they allegedly worked at the source of bad breath in the stomach.
- Scientific evidence established that bad breath originates in the mouth, not the stomach, rendering BreathAsure's capsules ineffective for their advertised purpose.
- Prior to the lawsuit, the National Advertising Division of the Better Business Bureau concluded that BreathAsure's claims of effectiveness were not supported by reliable scientific evidence.
Procedural Posture:
- Warner-Lambert Company sued BreathAsure, Inc. in federal district court, alleging false advertising under § 43(a) of the Lanham Act.
- Warner-Lambert sought a permanent injunction to stop BreathAsure from claiming its products were effective and from using the trade names "BreathAsure" and "BreathAsure-D."
- During the third day of a bench trial, BreathAsure stipulated that its products were not effective and consented to an injunction prohibiting it from advertising their effectiveness.
- The district court entered the injunction against the advertising claims but, after the trial concluded, refused to enjoin BreathAsure from using its trade names.
- The district court found the names were deceptive but concluded Warner-Lambert had failed to prove it was likely to be harmed by their continued use.
- Warner-Lambert, as appellant, appealed the district court's refusal to enjoin the trade names to the U.S. Court of Appeals for the Third Circuit.
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Issue:
Does a literally false product name used by a competitor create a presumption of likelihood of injury sufficient for an injunction under § 43(a) of the Lanham Act, without the plaintiff presenting specific evidence of harm such as consumer surveys or declining sales?
Opinions:
Majority - McKee, Circuit Judge
Yes, a literally false product name used by a competitor creates a presumption of likelihood of injury sufficient for an injunction. Because the name "BreathAsure" is a literally false claim of efficacy for a product that is scientifically ineffective, and the parties are direct competitors, the plaintiff does not need to produce extrinsic evidence like consumer surveys to demonstrate a likelihood of injury. The district court found that the name was deceptive and that the parties compete in the breath freshener market. When a claim is literally false, a court may grant injunctive relief without considering whether the public was actually misled, as the false claim itself has a tendency to deceive. To require a plaintiff to prove specific damages in such a case would contravene the purpose of injunctive relief under the Lanham Act, which is to stop the deceptive practice upon a showing of likely, not actual, damage. The district court erred by requiring a higher standard of proof that is typically reserved for claims that are merely misleading, not literally false.
Analysis:
This decision clarifies the standard for injunctive relief in false advertising cases under the Lanham Act within the Third Circuit, particularly distinguishing between literally false and merely misleading claims. It significantly lowers the evidentiary burden for plaintiffs facing competitors who make objectively false claims, especially through a product's name. By establishing that likelihood of injury is presumed in such cases, the ruling empowers companies to more easily and cost-effectively stop competitors from using deceptive branding, without needing to commission expensive consumer surveys to prove harm. This precedent reinforces the principle that a product's name itself can serve as a continuous, actionable false advertisement if it makes a false promise about the product's function.
