June 4, 2009

Use of House Mark Insufficient to Avoid Confusion

By Elizabeth K. Brock, Principal

Comparison of SPLENDA packaging (McNeil) and store-brand packaging (Heartland)

In McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, No. 07-2644, 2007 WL 4478981 (3d Cir. Dec. 24, 2007), a case involving alleged trade dress infringement, the Third Circuit Court of Appeals affirmed in part and reversed and remanded in part the District Court’s denial of McNeil’s motion for preliminary injunction.

McNeil manufactures and sells national-brand SPLENDA sucralose sweetener in yellow packaging. Heartland packages and sells sucralose sweetener in yellow packaging under the house marks of three groups of stores. McNeil brought suit against Heartland, alleging that Heartland’s store-brand packaging is confusingly similar to McNeil’s SPLENDA packaging. The District Court denied McNeil’s motion for preliminary injunction, finding no likelihood of confusion between the SPLENDA packaging and the three store-brand packages.

On appeal, the Third Circuit affirmed the District Court’s decision with respect to two of the package groups, but reversed and remanded with respect to the third. The District Court erred by not giving proper weight to the degree-of-similarity factor where Heartland uses a very small house mark on packages that are highly similar to McNeil’s in color scheme, pictures and package size. In determining likelihood of confusion, use of a house mark is not an independent defense or immunity to infringement; the presence of a house mark is part of the degree-of-similarity analysis. There is no rule that use of a house mark per se negates likelihood of confusion. Additionally, with respect to artificial sweeteners, packaging color alone is not proprietary; store-brands may use the same color packaging as national-brands so long as the trade dress as a whole is not too similar.

 

Reprinted with permission from INTA Bulletin, Vol. 63, No. 4 – February 15, 2008, Copyright © 2008 the International Trademark Association.