Orange County Trademark Attorney® Blog

March 2013 Archives

Diet Food Companies Clash over SLIM-FAST and SLIMFUL Trademarks

March 26, 2013,

weight_scale.jpgOrange 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.

Drug Maker Cannot Trademark Peppermint Flavor and Scent

March 6, 2013,

peppermint.jpgOrange County - Drug producer Pohl-Boskamp GmbH & Co. KG cannot trademark the peppermint scent and flavor of a nitroglycerin spray sold to help treat chest pain, according to a recent decision by the U.S. Trademark Trial and Appeal Board.

The TTAB ruled that the taste and smell of peppermint in the Nitrolingual Pumpspray is functional because the peppermint oil makes the spray more effective at treating chest pain due to angina and therefore it cannot be registered as a trademark. The board also ruled that the flavor and smell were not distinct enough to warrant trademark protection.

Pohl-Boskamp filed a trademark application for the peppermint scent and flavor of the Nitrolingual Pumpspray in 2010. The liquid is sprayed under the tongue and is used to help provide relief from an attack of angina pectoris, a form of chest pain brought on when the heart does not get the blood and oxygen it needs because of coronary heart disease.

The board pointed out that the Trademark Act does not bar scents and flavors from being trademarked, as the law describes a trademark as a "word, symbol or device" used to distinguish goods or services. However, the board said that Pohl-Boskamp did not prove that the scent and flavor of the Nitrolingual Pumpspray is deserving of a trademark.

The Trademark Trial and Appeal Board pointed to a patent owned by another company that indicates peppermint oil reduces side effects of nitroglycerin by increasing the rate at which it is absorbed into the bloodstream. This makes the peppermint functional and therefore not protectable by trademark. In other words, allowing the trademark to register would give Pohl-Boskamp a competitive advantage. "Competitors would either have to forgo using peppermint oil or find a way to mask the taste of the peppermint oil, if that were even possible," the board ruled.

The board also pointed out that Pohl-Boskamp's argument that the peppermint smell was "substantially exclusive" to its product was groundless, as the board found competing products with the same scent. The board ruled that since there are several competing products with a similar scent and flavor, consumers would perceive those characteristics as physical attributes of the product, not as indicators of the origin of the product.

"To allow applicant the exclusive right to market nitroglycerine formulations having the flavor of peppermint oil would impermissibly prevent the future use of therapeutic peppermint oil by others in applicant's field," the board concluded.