Brief for Petitioner — Conopco, Inc. v. May Department Stores Co.

(s) MOTION saute

No. 94-1437 —

— MAR. 29.1995

Supreme Court of the United States

OCTOBER TERM, 1994

CONOPCO, INC. d/b/a

CHESEBROUGH-POND’S USA CO.,

Petitioner,

VS.

MAY DEPARTMENT STORES COMPANY, VENTURE

STORES, INC., THE BENJAMIN ANSEHL COMPANY,

and KESSLER CONTAINERS, LTD.,

Respondents.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

MOTION FOR LEAVE TO FILE BRIEF

AND BRIEF OF THE BRISTOL-MYERS SQUIBB

COMPANY AS AMICUS CURIAE

IN SUPPORT OF THE PETITION

PAUL W. CANE, JR. SAMUEL D. ROSEN*

PAUL HASTINGS JANOFSKY LAWRENCE I. WEINSTEIN

& WALKER BRENDAN J. O’ROURKE

555 South Flower Street PAUL HASTINGS JANOFSKY

Los Angeles, California 90071 & WALKER

(213) 683-6000 399 Park Avenue

New York, New York 10022

(212) 318-6000

Attorneys for Amicus Curiae

*Counsel of Record

> BEST AVAILABLE COPY

:

!

MOTION FOR LEAVE TO FILE BRIEF AND

BRIEF OF THE BRISTOL-MYERS SQUIBB

COMPANY AS AMICUS CURIAE IN

SUPPORT OF THE PETITION

The Bristol-Myers Squibb Company (“Bristol”) hereby

moves, pursuant to Rule 37.2 of the Rules of this Court, for

leave to file the attached brief amicus curiae in support of the

petition for certiorari. Counsel for petitioner Conopco, Inc.

(“Conopco”) has consented to the filing of this brief.*

However, counsel for the respondents have each withheld

consent.

Bristol is one of the largest manufacturers of over-the-

counter pharmaceutical preparations, health and beauty aids

and personal and hair care products in the United States. Its

products, which include such famous household names as

EXCEDRIN®, BUFFERIN® and NUPRIN® analgesics,

BAN® antiperspirants, the CLAIROL® line of hair care

products, and KERI® skin care lotions, are sold in virtually

every supermarket, drug store and mass merchandiser in this

country. In each of these marketplaces, Bristol’s products face

fierce but fair competition. In some stores, the competition is

only from other national manufacturers, such as petitioner

Conopco. In others, Bristol also faces competition from the

store's own brands, also known as “private label” brands.

To catch the consumer’s eye amidst the cacophony of the

modern day retail marketplace, and to distinguish its products

from the like products of its competitors, Bristol has spent

hundreds of millions of dollars to develop and promote

distinctive and recognizable trade dress for each of its

products. As a result of these vast expenditures, consumers

* A copy of the consent letter is being filed concurrently with the Clerk of

the Court.

have come to associate this trade dress with the safety,

efficacy and overall high quality of Bristol’s products. Thus,

over the course of time, the trade dress of Bristol’s products

has become an invaluable corporate asset.

That asset, and the like assets of scores of other consumer

product manufacturers, has been placed in severe jeopardy by

the Federal Circuit’s 2-1 decision that is the subject of

Conopco’s petition. In Conopco, the panel majority expressly

authorized retailers selling their own private label products in

competition with national brands to slavishly copy the latter’s

trade dress, so long as the retailer’s own name or logo appears

on the package. The majority’s holding not only creates an

irreconcilable conflict between the Federal Circuit and other

Circuits, but also fundainentally ignores this Court’s recent

teachings in 7wo Pesos, Inc. v. Taco Cabana, Inc.,

US. , 112 S. Ct. 2753 (1992), as to the critical

importance trade dress plays in the selection of goods by

consumers. Conopco doubtless will embolden other private

label manufacturers to copy the famous trade dress of their

national brand competitors, and thus deceive consumers in

ways that other Courts of Appeals have held to violate the

Lanham Act, but to which the Federal Circuit gave its

blessing.

In short, Conopco fundamentally affects the vital interests

of Bristol, of other manufacturers of national consumer

brands, and of U.S. consumers. In Bristol’s case, the

consequences of the Federal Circuit’s decision are particularly

disturbing, because Bristol sells a variety of high quality over-

the-counter drug products, the indicia of origin of which

should not be placed in the hands of others over whom Bristol

has no control. For the above reasons, Bristol respectfully

requests leave to file the attached brief, and urges this Court

to grant Conopco’s petition and reverse the decision below.

Dated: March 28, 1995

New York, New York

Respectful r- Submitted

By: a) EA

ze D. ROSEN*

LAWRENCE I. WEINSTEIN

BRENDAN J. O’ROURKE

PAUL HASTINGS JANOFSKY

& WALKER

399 Park Avenue

31st Floor

New York, New York 10022

(212) 318-6000

PAUL W. CANE, JR.

PAUL HASTINGS JANOFSKY

& WALKER

555 South Flower Street

23rd Floor

Los Angeles, California 90071

(213) 683-6000

Attorneys for Amicus Curiae

* Counsel of Record

TABLE OF CONTENTS

TABLE OF AUTHORITIES

INTEREST OF AMICUS

REASONS FOR GRANTING THE

WRIT/SUMMARY OF POSITION

POCCOMOEHEOS EK SHOE CECE CO CECE CESS OCC CCESS

COCO e eee eeeseeeee

Review Is Necessary To Resolve A Conflict

Among The Circuits

. The Relevant Legal And Factual Context

Of The Conopco Decision

POPMOMOCCOSCS ECOSOC CCCOCDECESSRSSCCOCCCCCCCs

Cee rere oreeseseeeesses

CO eeereeeccocsocecceooocccoos

B. The Majority’s Holding

C. The Federal Circuit’s Decision Creates

A Conflict Among The Circuits

1. The Federal Circuit Ignored A Long

Line Of Cases Recognizing

“Sponsorship” Or “Association”

Confusion

. The Federal Circuit Ignored The

Line Of Cases Recognizing “Foot-

In-The-Door” Confusion

CONCLUSION

TIESCROCOCEEOSEEECHEEEOSG49806 00606006066 066

Coe ee oeeeesseeesseese

DN eSeESRRGGCS EE CEEOL EREEE ERE EE ER REREAD EEHEKCEESESeec ac

10

15

Vii

TABLE OF AUTHORITIES

CASES

Academy of Motion Picture Arts & Sciences v.

Creative House Promotions, Inc.. 944 F.2d 1446

GP WD sisislaniisitciiiatieisi i

AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th

DARE sinelicdetvlahieshsioasieaicsieucsaiia ec 8S

Ambrit, Inc. v. Kraft, Inc., 812 F.2d 153] (11th Cir.

1986), cert. denied, 481 U.S. 104] (2 aa

American Chicle Co. vy. Topps Chewing Gum, Inc..

208 F.2d 560 (2d Cir. DINE cicinloiasiabiist ceo

Anheuser-Busch, Inc. v. Balducci Publications, 28

F.3d 769 (8th Cir. 1994), cert. denied. _ US.

a» 11S. S. Ct. 903 (1995). ecccccccccececoecoscce......

Badger Meter v. Grinnell Corp., 13 F.3d 1145 (7th

nn ER iitebinceiicitaloec nosed ee

Bauer Lamp Co. vy. Shaffer, 941 F.2d 1165 (11th

2 | Rn Warnisellch ond pameiRaln an aa

Chevron Chemical Co. vy. Voluntary Purchasing

Groups, Inc., 659 F.2d 695 (Sth Cir. 198] ), cert.

denied, 457 U.S. 1126 (1982) .occeccccccccecccee

Ciba-Geigy Corp. v. Bolar Pharmaceutical Co., 547

F. Supp. 1095 (D.N.J. 1982), aff'd, 719 F.2d 56

(3d Cir. 1983), cert. denied, 465 U.S. 1080

[Pe ssisnsnestininecibieniinetnsneelacscne ck

Coach Leatherware Co. v. AnnT; aylor, Inc., 933

F.2d 162 (2d Cir. 1991) ooo eccccccccccccsecseeeseeccc

Page

WN

14

1]

os

CASES

Florence Mfg. Co. v. J.C. Dowd & Co., 178 F. 73

aes OP accadnasedcinansainiensiasamameneadtiametnereiaaa

Grotrian, Helfferich, Schulz, Th. Steinweg Nachf v.

Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975)...

Helene Curtis Indus., Inc. v. Church & Dwight Co.,

560 F.2d 1325 (7th Cir. 1977), cert. denied, 434

Sais Ne ewe hssstivicsnantesdandceubaanbennienbnscranacen

James Burrough Ltd. v. Sign of the Beefeater, Inc.,

PO Fk BOO CI GE, UFO) sccenavensinnsncssnctaxsossnens

Kraft General Foods, Inc. v. Friendship Dairies, 19

U.S.P.Q. 2d 1691 (S.D.N.Y. 1991)...........ccc.ececeeees

Kroger Co. v. Johnson & Johnson, 570 F. Supp.

Pe CEs GENIE BTID Potecsnsncsevcrensntstsencasasenicesteensnns

Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71 (2d

A, i aixscksccdndtinxstoletshaceritesdtasaiedeaadietalieas:

Lois Sportswear, U.S.A., Inc. v. Levi Strauss, 799

Fe ET Ce Gs CUE waetiactreseshaseiaccemtanthjartencion

Mastercrafters Clock & Radio Co. v. Vacheron &

Constantin-Le Coultre Watches, Inc., 221 F.2d

464 (2d Cir.), cert. denied, 350 U.S. 832 (1955)...

McDonald's Corp. v. McBagel’s, Inc., 649 F. Supp.

Ec. Bi aaincnicaisccesiipsittsctainnatanisedess

Mobil Oil Corp. v. Pegasus Petroleum Corp., 818

Fe Pe I Gels: OUT E vsivesectdcasehbobeinanicoedansunsniess

Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397

(8th Cir. 1987), cert. denied, 488 U.S. 933 (1988)..

ix

CASES

Oral-B Labs., Inc. v. Mi-Lor Corp., 810 F.2d 20 (2d

te ; ; SORE sdieslleaselhells tuthaahansisioasiaaeiinones

Osem Food Indus. Ltd. v. Sherwood Foods, Inc..

917 F.2d 161 (4th Cir. 1990) occ ccccccccccccccccceeeee.

Perfect Fit Indus., Inc. v. Acme Quilting Co., 618

F.2d 950 (2d Cir. 1980), cert. denied, 459 U.S.

Be Se ia nceshaddennedcatocinciaes bean iceaacinsevseec doce

Playboy Enterprises, Inc. v. Chuckleberry

Publishing, Inc., 486 F. Supp. 414 (S.D.N.Y.

1980), aff'd, 687 F.2d 563 (2d Cir. 1982) .............

Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d

492 (2d Cir.), cert. denied, 368 U.S. 820 (1961)...

Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589

Fe Beet CIO CIE, FTG) nccecceccescececcscncsevececosneconces

SquirtCo v. Seven-Up Co., 628 F.2d 1086 (8th Cir.

I ieseetae aire taniielisaciecactnccenenceenecsaiocdoeciorecan

Two Pesos, Inc. v. Taco Cabana. Inc.. U.S.

pe 2a CPU iicccecesiecescrsancarsedicess:

Veryfine Prods., Inc. v. Colon Bros., Inc., 799 F.

I. BO Ce a. PIG orieietssnivesanssissetosaiiacerssvene

W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656 (2d

Siete a art

Ziegenfelder Co. v. Dunkirk Ice Cream Co., 30

U.S.P.Q. 2d 1604 (N.D. W.Va. 1993) ooo.ceccccceceee,

STATUTES

Lanham Act, 15 U.S.C. § 1125(a) cooceccccccccecceccceseeees

Page

WN

WN

No. 94-1437

IN THE

Supreme Court of the United States

OCTOBER TERM, 1994

CONOPCO, INC. d/b/a

CHESEBROUGH-POND’S USA CO.,

Petitioner,

VS.

MAY DEPARTMENT STORES COMPANY, VENTURE

STORES, INC., THE BENJAMIN ANSEHL COMPANY,

and KESSLER CONTAINERS, LTD.,

Respondents.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

MOTION FOR LEAVE TO FILE BRIEF

AND BRIEF OF THE BRISTOL-MYERS SQUIBB

COMPANY AS AMICUS CURIAE

IN SUPPORT OF THE PETITION

INTEREST OF AMICUS

Amicus The Bristol-Myers Squibb Company (“Bristol”)

respectfully refers this Court to the description of its interest

presented in its annexed motion for leave to file this brief.

————————————

REASONS FOR GRANTING THE WRIT/

SUMMARY OF POSITION

This Court and each of the Courts of Appeals to have ad-

dressed the issue have recognized the critical importance of

trade dress to both manufacturers and consumers.’ To the

manufacturer, which often spends millions of dollars develop-

ing and promoting it, the trade dress associated with its prod-

ucts is a vital and extraordinarily valuable aspect of its

business. To the consumer, trade dress is an important -- often

the most important -- means of quickly distinguishing his or

her product of choice from the sea of competitive products

during what is typically a hurried shopping expedition.

In this case, a divided panel of the Federal Circuit, purport-

ing to apply Eighth Circuit law, reversed a decision of the

United States District Court for the Eastern District of Mis-

souri reached after an eight-day bench trial. The majority held

that Section 43(a) of the Lanham Act, 15 U.S.C. § 112S5(a),

permits retailers that market both their own private label store

brand and a competing national brand to deliberately copy the

national brand’s trade dress, so long as the retailer's own

house mark or logo is also somewhere affixed to the package.

The majority’s holding is premised on a fundamental disre-

gard of how trade dress affects consumer purchasing deci-

sions and of the different types of actionable consumer confu-

sion that result when one party pirates another’s distinctive

trade dress. The Federal Circuit’s decision creates a clear

conflict among the Circuits. The panel majority ignored two

well-established lines of cases which recognize that certain

types of consumer confusion cannot be prevented by a

' Trade dress is the overall appearance of a product or its packaging,

including color scheme, shape, size, graphic presentation and other

stylized elements.

3

retailer’s use of its own mark in conjunction with the

competitor’s mark or trade dress that the retailer copied or

simulated. For example, the Federal Circuit ignored the kind

of customer confusion that results (and that the trial court

found as a fact would likely result here) when a product, even

though understood by consumers not to be the national brand,

is thought to be authorized, licensed or sponsored by the

national brand (“sponsorship” or “association” confusion).

Similarly, the Federal Circuit also ignored the kind of

consumer confusion that results when copycat trade dress

catches the consumer’s eye in the store, even if, by the time of

purchase, the consumer realizes that the product is not in fact

the national brand (so-called “foot-in-the-door” confusion).

Congress enacted Section 43(a) of the Lanham Act to cre-

ate a uniform federal standard to protect consumers from

marketplace confusion and to protect manufacturers from

unfair competition caused by the “deceptive and misleading

use” of trademarks and trade dress. Thus, any conflict among

the Circuits as to whether a particular type of activity violates

the Lanham Act necessarily frustrates Congress’s goal.

Moreover, the conflict engendered by the decision of the

Conopco panel majority is especially serious, because trade

dress copying by private label manufacturers is an increas-

ingly common phenomenon. Unless reversed, the Federal

Circuit’s decision cannot help but encourage more private

label manufacturers to become copyists, and will, at a mini-

mum, foster confusion among national brand and private label

manufacturers as to the latter’s rights to deliberately simulate

the former’s well-known trade dress. Trade dress copying will

severely harm national brand manufacturers such as Conopco

and Bristol, whose substantial financial investments in the

development of proprietary trade dress and associated good

will are threatened with misappropriation without compen-

sation, and whose good will and reputations for high quality

products will be placed in the hands of copyists over whom

the national brand manufacturers have no control. Trade dress

piracy will also injure American consumers, who the Federal

Circuit has now held to be fair game for marketing tactics that

other federal appellate and trial courts have denounced as de-

ceptive and unfair.

Review Is Necessary To Resolve A Conflict

Among The Circuits

A. The Relevant Legal And Factual Context Of The

Conopco Decision

As this Court recently held, Congress enacted the Lanham

Act “to make ‘actionable the deceptive and misleading use of

marks’ and ‘to protect persons engaged in commerce .. .

against unfair competition.””” Two Pesos, Inc. v. Taco Ca-

bana, Inc., _—~seUS. __, 112 S. Ct. 2753, 2757 (1992),

quoting Lanham Act § 45, 15 U.S.C. § 1127. In Two Pesos,

this Court expressly recognized the importance to both manu-

facturers and consumers of a uniform nationwide law prohib-

iting trade dress infringement and held that the Lanham Act

protects trade dress to the full extent that it protects trade-

marks:

Protection of trade dress, no less than of trademarks,

serves the [Lanham] Act’s purpose to “secure to the

owner of the mark the goodwill of his business and

to protect the ability of consumers to distinguish

among competing producers. National protection of

trademarks is desirable, Congress concluded,

because trademarks foster competition and the

maintenance of quality by securing to the producer

the benefit of good reputation.”

112 S. Ct. at 2760, quoting Park 'N Fly, Inc. v. Dollar Park

and Fly, Inc., 469 U.S. 189, 198 (1985).

To prevail on a claim for trade dress infringement, a plain-

tiff must first establish a protectable interest in its trade dress.

See Two Pesos, 112 S. Ct. at 2757-58. If it meets that test, as

petitioner did here, 784 F. Supp. at 677 (Petition at 78a-79a),

it then must establish a likelihood that consumers will be de-

ceived or confused by the similarity of the defendant’s trade

dress. 112 S. Ct. at 2763 (Stevens, J., concurring). The Courts

of Appeals have applied materially identical tests for deter-

mining whether a likelihood of confusion exists. These tests

require evaluation of various factors, including (1) the strength

of the plaintiff's mark or trade dress; (2) the degree of

similarity of the parties’ marks or trade dress; (3) the simi-

larity of the parties’ products; (4) the competitive proximity

of the products; (5) the defendant’s intent; and (6) instances of

actual confusion. SquirtCo v. Seven-Up Co., 628 F.2d 1086,

1091 (8th Cir. 1980); see, e.g, Polaroid Corp. v. Polarad

Elecs. Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368

U.S. 820 (1961); Scott Paper Co. v. Scott's Liquid Gold, Inc..,

589 F.2d 1225, 1229 (3d Cir. 1978); Helene Curtis Indus.

Inc. v. Church & Dwight Co., 560 F.2d 1325, 1330 (7th Cir.

1977), cert. denied, 434 U.S. 1070 (1978); AMF, Inc. y.

Sleekcraft Boats, 599 F.2d 341. 348-49 (9th Cir. 1979).

Proof that defendant intentionally copied plaintiff's mark or

trade dress creates a powerful presumption that one or more

types of actionable consumer confusion will result.’ This

* Perfect Fit Indus., Inc. v. Acme Quilting Co., 618 F.2d 950, 954 (2d Cir

1980), cert. aenied, 459 U.S. 832 (1982) (“If there was intentional copying,

the second comer will be presumed to have intended to create a confusing

similarity of appearance and will be presumed to have succeeded’’),

Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre

Watches, Inc., 221 F.2d 464, 467 (2d Cir.), cert. denied. 350 U.S. 832

(1955) (intentional copying “gives rise to a powerful inference that

confusion is likely, and puts on the alleged infringer the burden of going

forward with proof that it is not”). Accord, Osem Food Indus. Lid v

(Footnote continued)

presumption dates back nearly to the beginning of the century,

to the Second Circuit’s common sense observation that:

“It is so easy for the honest businessman, who

wishes to sell his goods upon their merits, to select

from the entire material universe which is before

him, symbols, marks and coverings, which by no

possibility can cause confusion between his goods

and those of his competitors, that the courts look

with suspicion upon one who, in dressing his goods

for the market, approaches so near to his successful

rival that the public may fail to distinguish between

them.”

Florence Mfg. Co. v. J.C. Dowd & Co., 178 F. 73, 78 (2d

Cir. 1910). Several decades later, Judge Learned Hand

reached the equally common sense conclusion that, since the

intentional copyist “is intimately concerned with the prob-

able reaction in the market, his judgment manifested prior to

the controversy” that copying the first comer to the market

would be of commercial benefit to the copyist, “is highly

persuasive” that consumer confusion will indeed result.

American Chicle Co. v. Topps Chewing Gum, Inc., 208 F.2d

560, 563 (2d Cir. 1953), quoting Restatement of Torts § 729

comment (e) (1938).

Sherwood Foods, Inc., 917 F.2d 161, 165 (4th Cir. 1990) (“When a

newcomer to the market copies a competitor’s trade dress, its intent must be

to benefit from the goodwill of the competitor’s customers by getting them

to believe that the new product is either the same, or originates from the

same source as the product whose trade dress was copied”); Academy of

Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944

F.2d 1446, 1456 (9th Cir. 1991) (“When one party knowingly adopts a mark

similar to another’s, reviewing courts presume that the defendant will

accomplish it purpose, and the public will be deceived”); Bauer Lamp Co. v

Shaffer, 941 F.2d 1165, 1172 (11th Cir. 1991) (same holding).

As set forth in detail in Conopco’s petition, the trial court

found as a fact that Conopco’s trade dress for Vaseline Inten-

sive Care Lotion (“Vaseline Intensive Care”) was a strong

mark; that respondents deliberately set out to copy the

Vaseline Intensive Care trade dress; that in doing so,

numerous potential designs were rejected as not appearing

similar enough to the Vaseline Intensive Care trade dress; that

respondent Venture chose not to put its own name on the front

of its private label package, but did place the Vaseline

Intensive Care mark, complete with trademark registration

symbols, on the front of the package; and that the trade dress

that respondents ultimately adopted was extremely similar to

that of Vaseline Intensive Care. 784 F. Supp. at 659-61, 664,

666-67, 678 (Petition at 42a-44a, 54a, 56a-57a, 80a).

B. The Majority’s Holding

The Federal Circuit did not disturb any of those factual

findings. Nonetheless, it held, with one judge dissenting, that

the trial court committed clear error in its ultimate finding that

consumer confusion would likely occur. Dismissing the trial

court’s factual findings as to the similarity of the parties’ trade

dress and respondents’ intentional copying as “at best merely

inferentially or presumptively relevant to the likelihood of

confusion,” 32 U.S.P.Q.2d 1225, 1232 (Fed. Cir. 1994)

(Petition at 16a), the majority expressly endorsed respon-

dents’ copying of Conopco’s trade dress as a legitimate way

to hawk a message of product comparability:

This is a case in which a retailer markets a na-

tional brand product and at the same time markets

its own private label product in direct competition.

The retailer packages its product in a manner to

make it clear to the consumer that the product is

similar to the national brand, and is intended for the

same purposes. At the same time, the retailer clearly

marks its product with its private logo, and ex-

pressly invites the consumer to compare its product

with that of the national brand, by name... . We

are unwilling to attribute to the Eighth Circuit, ab-

sent clear precedent so requiring, a rule that would

make such competition presumptively unlawful.

32 U.S.P.Q.2d at 1231 (Petition at 15a).

An essential aspect of the majority’s analysis was its as-

sumption that the only type of consumer confusion relevant to

a likelihood of confusion analysis was “confusion about

whose product was whose,” 32 U.S.P.Q.2d at 1232 (Petition

at 18a), i.e., whether respondents’ trade dress was likely to

cause consumers to purchase the Venture private label skin

care lotion in the mistaken belief that they had actually se-

lected a bottle of Vaseline Intensive Care. Concluding that

even in the absence of the Venture name on the front of the

private label bottle, the presence of the Venture logo on the

front of the bottle made that type of confusion unlikely, 32

U.S.P.Q.2d at 1231-32 (Petition at 16a-17a), the Federal Cir-

cuit reversed the trial court’s determination that respondents

were liable under Section 43(a) for trade dress infringement.

C. The Federal Circuit’s Decision Creates A Con-

flict Among The Circuits

Petitioner Conopco is absolutely correct that the Federal

Circuit’s holding -- that a store selling its own private label

brand may freely copy the trade dress of a national brand to

communicate product comparability or otherwise to invite

consumer comparison if the store displays its own trademark

or logo on the private label product or package -- conflicts

with the Second Circuit’s decision in Oral-B Labs., Inc. v.

Mi-Lor Corp., 810 F.2d 20, 22-23 (2d Cir. 1987). There, the

Second Circuit expressly rejected the argument that the pri-

vate label manufacturer of a store brand toothbrush could

9

copy the trade dress of ORAL-B, a national toothbrush brand,

to evoke consumer comparison of the store brand with

ORAL-B, or could avoid liability for trade dress infringement

by adding to the private label package, as respondents did in

the case at bar, “the name of [the] retailer” and a statement

inviting the consumer to “COMPARE WITH ORAL-B.”

In like manner, as petitioner informs this Court (Petition at

12 n.9), the Federal Circuit’s decision is also inconsistent with

federal district court cases holding that it is a violation of the

Lanham Act for retailers to copy the trade dress of national

brands on competing private label products, notwithstanding

that the retailer’s name appears on the package of the copycat

product. E.g., Kroger Co. v. Johnson & Johnson, 570 F.

Supp. 1055 (S.D. Ohio 1983) (store brands’ mimicking of the

distinctive TYLENOL trade dress and trademark violated the

Lanham Act, notwithstanding that the copycat packaging bore

the names of the well-known supermarket and drug store

chains Kroger and Super X); Ziegenfelder Co. v. Dunkirk Ice

Cream Co., 30 US.P.Q.2d 1604 (N.D. W.Va. 1993)

(preliminary injunction granted in case involving private la-

bel’s copying of major brand’s trade dress even though pri-

vate label’s trademark appeared on the copyist’s package).

Kroger is especially instructive. There, like here, retailers de-

liberately copied the packaging of a well-known national

brand in order that the retailers’ store brands would be

“reminiscent” of the national brand in shoppers’ minds. 570

F. Supp. at 1057 n.4. In enjoining the retailers from using

their copycat packaging, the court clearly recognized what the

Federal Circuit in Conopco simply missed:

There is something inherently unfair in the effort by

[the retailers] to avail themselves of the name and

good will of Tylenol. [Johnson & Johnson has]

expended millions of dollars in advertising [its]

product to the American public. To permit a

10

bystander who has spent a minimum of time,

money, and effort in developing its product to profit

by marketing the identical commodity with a

similar name and packaging is contrary to the stated

Congressional purpose of the Lanham Act.

Id. at 1060.

Moreover, Bristol respectfully submits that petitioner has in

fact understated the extent and scope of the inter-circuit con-

flict engendered by the Federal Circuit’s decision. In holding

that petitioner could not prevail without proving that consum-

ers were likely to buy the Venture store brand product in the

mistaken belief that they were buying Vaseline Intensive

Care, the Federal Circuit utterly disregarded the relevance of

two other equally pernicious kinds of consumer confusion

that are spawned by trade dress piracy, that were found by the

trial court to be present in this case, and that other federal ap-

pellate and district courts have held to be actionable under the

Lanham Act.

1. The Federal Circuit Ignored A Long Line

Of Cases Recognizing “Sponsorship” Or

“Association” Confusion

The first such kind of confusion is confusion as to associa-

tion or sponsorship, in which consumers recognize at the time

of purchase that defendant’s product is being sold under a

brand name other than plaintiff's, but are induced to believe

that plaintiff has manufactured, sponsored or authorized de-

fendant’s product because of defendant’s use of a trademark

or trade dress that closely mimics or copies plaintiffs. E.g.,

Lois Sportswear, U.S.A., Inc. v. Levi Strauss, 799 F.2d 867,

872 (2d Cir. 1986) (Lanham Act violation occurs even where

consumer realizes at the point of purchase that he is not buy-

ing LEVI’s jeans, but is nonetheless confused by defendant’s

use or emulation of plaintiff's proprietary trade dress or marks

— 7: a

——

11

into believing that [defendant] either somehow is associated

with [plaintiff] or has consented to [plaintiff's] use of its

trademark”); James Burrough Ltd. v. Sign of the Beefeater,

Inc., 540 F.2d 266, 274 (7th Cir. 1976) (likelihood of confu-

sion established where consumer is likely to believe that de-

fendant’s enterprise “may in some way . . . be connected or

affiliated with, or sponsored by” plaintiff); Anheuser-Busch,

Inc. v. Balducci Publications, 28 F.3d 769, 774 (8th Cir.

1994), cert. denied, _ US. __,, 115 S. Ct. 903 (1995),

quoting McCarthy, Trademarks and Unfair Competition

§ 24.03, at 24-13 (3d ed. 1992) (under Lanham Act, “an eX-

pansive interpretation of likelihood of confusion” is appropri-

ate, extending ‘protection against use of plaintiff's mark on

any product or service which would reasonably be thought by

the buying public to come from the same source, or thought to

be affiliated with, connected with, or sponsored by, the

trademark owner’ ”); Mutual of Omaha Ins. Co. v. Novak, 836

F.2d 397, 398 (8th Cir. 1987), cert. denied, 488 U.S. 933

(1988) (likelihood of confusion as to whether plaintiff “has

sponsored, endorsed or is otherwise affiliated with” defen-

dant’s design establishes liability under Section 43(a)).

In amending Section 43(a) of the Lanham Act in 1988,

Congress made explicit that the statute prohibited conduct

likely to cause confusion as to “affiliation, . . . association .. . ,

sponsorship, or approval . . . ”? The trial court found as a fact

that respondent’s packaging created a likelihood of confusion

as to sponsorship. 784 F. Supp. at 682-83 (Petition at 89a-

90a).

> As amended in 1988, 15 U.S.C. § 1125(a) (1) prohibits acts in commerce

that are “likely to cause confusion, or to cause mistake, or to deceive as to

the affiliation, connection, or association of such person with another

person, or as to the origin, sponsorship, or approval of his or her goods,

services, or commercial activities by another person . . .” (Petition at 3).

12

2. The Federal Circuit Ignored The Line Of

Cases Recognizing “Foot-In-The-Door”

Confusion

The second such type of confusion, often referred to as

“foot-in-the-door” confusion, is the explicit goal of the private

label copyist, who deliberately uses the familiar trade dress of

a famous brand to call a consumer’s attention, either con-

sciously or subliminally, to the private label product. In such

circumstances, the consumer is initially attracted to and in-

duced to consider purchasing a private label brand that he or

she would not otherwise have considered buying, because of

the private label’s attention-getting use of the established

brand’s well-known trade dress or trademark -- a ploy similar

to the prohibited practice of bait and switch. In Conopco, the

trial court found as a fact that this was precisely what respon-

dents intended. 784 F. Supp. at 666 (Petition at 56a).

Federal courts have long recognized that “borrowing” a

competitor’s trademarks or trade dress, and the good will at-

tendant thereto, to compete against the trademark or trade

dress owner, is unfair competition in violation of the Lanham

Act even where, by the time the consumer ultimately pur-

chases the copyist’s product, he or she realizes that it is not

the established brand. In Grotrian, Helfferich, Schulz, Th.

Steinweg Nachf v. Steinway & Sons, 523 F.2d 1331 (2d Cir.

1975), the Second Circuit affirmed an injunction for in-

fringement of the famous Steinway trademark for pianos,

notwithstanding the absence of any proof that at the time of

purchase, consumers mistakenly believed they were buying

Steinway pianos. An injunction was warranted, the Court of

Appeals found, because defendant’s adoption of a similar

mark would likely cause “subliminal confusion . . . as to the

relationship . . . between the corporate entities and the prod-

ucts that can transcend the competence of even the most so-

phisticated consumer” who, having been “[mlJisled into an

13

initial interest” in the junior user’s product, might elect to buy

it even after recognizing it to be a different brand. /d. at 1341.

Similarly, in Mobil Oil Corp. v. Pegasus Petroleum

Corp., 818 F.2d 254, 259 (2d Cir. 1987), the Second Circuit

found a likelihood of confusion respecting defendant’s use

of the word Pegasus as the trade name for its oil company,

where a graphic nonverbal presentation of Pegasus is Mo-

bil’s famous trademark. The Court of Appeals concluded

that confusion was likely, not because a third party would

ultimately contract with defendant “believing it is related to

Mobil, but rather in the likelihood that [defendant] would

gain critical credibility during the initial phases of a deal” as

a result of a fleeting association caused by the similar im-

ages of the parties’ marks. Accord, Playboy Enterprises, Inc.

v. Chuckleberry Publishing, Inc., 486 F. Supp. 414, 428

(S.D.N.Y. 1980), aff'd, 687 F.2d 563 (2d Cir. 1982)

(PLAYMEN for men’s magazine infringes PLAYBOY

mark, not because consumers will be duped into believing

they are buying PLAYBOY Magazine, but rather because

defendant’s “exploiting [a] subliminal or conscious associa-

tion with plaintiff's well-known name” may motivate con-

sumers to buy PLAYMEN who would not otherwise have

done so had the magazine carried a different name);

McDonald's Corp. v. McBagel’s, Inc., 649 F. Supp. 1268,

1273-74, 1279 (S.D.N.Y. 1986) (enjoining use of McBagel’s

mark for bagel restaurant even though consumers would

readily recognize, well before even entering defendant’s

restaurant, that it was not McDonald’s. Injunction issued

because use of “Mc” mark would cause consumers to asso-

ciate defendants “however fleetingly, with plaintiff's goods,

services, sponsorship or other support,” and thus to eat at

McBagel’s whereas, absent defendant’s use of the closely

similar mark, consumers may never have noticed defen-

dant’s business.)

14

As the above cases reflect, the placement of a junior

user’s trademark on trade dress that the junior user copied

from the senior user in no way eliminates the risk of asso-

ciational or “foot-in-the-door” confusion. Thus, the Federal

Circuit’s conclusion in Conopco -- that the presence of the

Venture logo on respondent’s packages is sufficient to dispel

any likelihood of confusion -- is squarely at odds with a long

line of federal appellate and district court decisions holding

precisely to the contrary. For example, in W.E. Bassett Co.

v. Revlon, Inc., 435 F.2d 656, 662 (2d Cir. 1970), plaintiff,

the owner of the mark “Trim” for a manicuring tool, sued

Revlon for infringement based on Revlon’s use of the mark

“Revion’s Cuti-Trim” for a similar product. Although

defendant’s packaging prominently featured the famous

Revlon mark, the Second Circuit affirmed judgment for

plaintiff, holding that “Revlon’s reliance on the fact that it

uses its well-known name along with ‘Cuti-Trim’ is mis-

placed” because this “tactic could well show that Revlon

was seeking . . . to couple the benefits of the ‘Trim’ mark

with the persuasive powers of its own name, and thus the

tactic could not ensure against, but might indeed promote,

confusion.” Accord, Coach Leatherware Co. v. AnnTaylor,

Inc., 933 F.2d 162, 1970 (2d Cir. 1991) (infringement found

in defendant’s emulation of plaintiff's well-known style of

tag affixed to leather handbags, notwithstanding that plain-

tiff's and defendant’s well-known names appeared on their

respective tags); Badger Meter v. Grinnell Corp., 13 F.3d

1145, 1152 (7th Cir. 1994) (finding of likelihood of confu-

sion affirmed despite presence of house labeling on defen-

dant’s product); Ambrit, Inc. v. Kraft, Inc., 812 F.2d 1531,

1540 (11th Cir. 1986), cert. denied, 481 U.S. 1041 (1987)

(presence of defendant’s mark on its goods does not prevent

finding of trade dress infringement); Chevron Chemical Co.

v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 698

(Sth Cir. 1981), cert. denied, 457 U.S. 1126 (1982) (same

15

holding); Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71, 79

(2d Cir. 1985) (same holding).*

Critically, the Federal Circuit’s decision in Conopco ig-

nores these substantial precedents and expressly approves a

practice that the federal courts previously had widely con-

demned -- a copyist’s deliberate simulation of another’s well-

known, familiar mark or trade dress as a marketing device

designed to call attention to the copyist’s product. As these

courts have recognized, hitching a free ride on the packaging

recognition that another manufacturer has labored long and at

great expense to develop is precisely the type of unfair com-

petition that Congress, in enacting the Lanham Act, sought to

prohibit.

CONCLUSION

The decision of the Conopco panel majority is a frontal as-

sault on the rights of national brand manufacturers to protect

their investment in the development of proprietary trade dress

from piracy by private label competitors, and an open invitation

for retailers marketing private label brands to make free use of

the good will that national brand manufacturers have invested

vast sums to develop. Nor will consumers benefit from this

misguided attempt at Robin Hood justice: quite to the contrary,

the sleight of hand practices to which the Federal Circuit has

* See also Veryfine Prods., Inc. v. Colon Bros., Inc., 799 F. Supp 240, 252

(D.P.R. 1992) (presence of defendant’s mark on challenged packaging does

not dispel likelihood of confusion); Kraft General Foods, Inc. v. Friendship

Dairies, 19 U.S.P.Q.2d 1691, 1693-94 (S.D.N.Y. 1991) (likelihood of con-

fusion found as to trade dress of sour cream containers notwithstanding that

both cartons displayed their respective manufacturer’s well-known brand

names); Ciba-Geigy Corp. v. Bolar Pharmaceutical Co., 547 F. Supp. 1095,

1102-03 (D.N.J. 1982), aff'd, 719 F.2d 56 (3d Cir. 1983), cert. denied, 465

U.S. 1080 (1984) (infringement found even though defendant’s corporate

logo was imprinted on look-alike generic drugs).

_—

16

now given its approval have routinely been viewed by other

federal courts as profoundly deceptive and unfair.

The Conopco decision is not only at odds with the expan-

sive scope of trade dress protection under the Lanham Act

which this Court recognized in Two Pesos, but is also in

hopeless conflict with the decisions of other Courts of Ap-

peals. Amicus Bristol respectfully requests that this Court

grant Conopco’s petition, resolve this conflict and reverse the

Federal Circuit’s decision.

Dated: March 28, 1995

New York, New York

Respectfully Submitte

By: Neus A

SAMUEL D. ROSEN*

LAWRENCE I. WEINSTEIN

BRENDAN J. O’ ROURKE

PAUL HASTINGS JANOFSKY

& WALKER

399 Park Avenue

31st Floor

New York, New York 10022

(212) 318-6000

PAUL W. CANE, JR.

PAUL HASTINGS JANOFSKY

& WALKER

555 South Flower Street

23rd Floor

Los Angeles, California 90071

(213) 683-6000

Attorneys for Amicus Curiae

* Counsel of Record

ee — . oii aeithealiine bai