Orange County - Unilever NV and International IP Holdings, LLC are in a trademark war, debating whether International IP Holdings' SLIMFUL trademark used in relation to diet foods infringes Unilever's SLIM-FAST trademark.
On March 18th, International IP Holdings filed a lawsuit against Unilever subsidiary Conopco, Inc. in Michigan federal court seeking a declaratory judgment that Conopco has no grounds to preclude it from using the SLIMFUL trademark.
"Conopco does not own a trademark registration for the term 'Slimful,' it has never used the term as a trademark to identify the source of any product, and the term 'Slimful' does not appear anywhere on Conopco's products," Internationbal IP Holdings' complaint said.
International IP Holdings claimed that Conopco gave it notice in mid-February that the Slimful product packaging infringed the Conopco's Slim-Fast meal replacement trademarks and trade dress. International IP Holdings argued that its packaging did not infringe Conopco's trade dress, as it had used significantly more yellow than red to distinguish its product from Slim-Fast. International IP Holdings also claimed that its packaging has other features, such as the typeface and artwork, that are significantly different from what is used on the Slim-Fast bars.
The day after International IP Holdings filed its complaint for declaratory relief, Unilever fired back by filing a lawsuit in New York federal court, claiming that the Slimful products infringe its trademarks and trade dress.
Unilever said in its complaint that Slimful's packaging uses "simulations, confusingly similar variations, or colorable imitations" of the Slim-Fast packaging and that the company has blatantly copied the Slim-Fast trade dress.
Unilever also claims that International IP Holdings filed an application for SLIMFUL even though it had knowledge of the SLIM-FAST trademark and the fact that it has been in use since 1977 on billions of dollars worth of meal replacements and other diet products. Unilever also alleged that International IP Holdings has made false and misleading claims about its own products.
International IP Holdings responded to Unilever's lawsuit on Thursday with a motion to dismiss, claiming that it had filed its claim in Michigan first and that the case was not linked to New York and therefore the New York federal court does not have jurisdiction over the matter.