Playtex Products v. Georgia-Pacific

Citation: Playtex Products, Inc. v. Georgia-Pacific Corp., 2003 U.S. Dist. LEXIS 13981 (S.D.N.Y. Aug. 12, 2003), aff’d, 390 F.3d 158, 73 U.S.P.Q.2d (BNA) 1127 (2d Cir. 2004).

Factual Background
Plaintiff owned the trademark WET ONES for pre-moistened towelettes. Defendant marketed a competing product under the name QUILTED NORTHERN MOIST-ONES. Plaintiff sued for trademark infringement, false designation of origin, and dilution.

In an earlier action, both parties moved for summary judgment, and the district court granted defendant’s motion on all counts, finding that the dissimilarity between the overall marks, the prominent use of the QUILTED NORTHERN house mark on the product packaging, the lack of actual confusion, and the absence of bad faith established a lack of likelihood of confusion required for plaintiff’s infringement and false-designation-of-origin claims.

Trial Court Proceedings
This same dissimilarity in marks led the district court to find no dilution under federal or state law.

Appellate Court Proceedings
Plaintiff appealed and the Second Circuit affirmed. The appellate court first analyzed the issue of likelihood of confusion. It agreed with the district court that the parties’ products and channels of trade were identical, that the purchaser-sophistication factor favored plaintiff because of the inexpensive nature of the products, and that plaintiff’s mark was a well-established and famous mark.

The crux of plaintiff’s appeal rested on the similarity-of-the-marks factor. Plaintiff argued that the comparison should be between WET ONES and MOIST-ONES, but the Second Circuit agreed with the district court that the evidence showed that defendant marketed its product as QUILTED NORTHERN MOIST-ONES and never MOIST-ONES standing alone. And the Second Circuit agreed with the lower court that the marks were not confusingly similar due to the differences in the overall marks; though “moist” and “wet” had similar meanings, the terms were dissimilar in sound and appearance; and the prominence of the QUILTED NORTHERN mark on the product packaging.

Regarding actual confusion, plaintiff noted that the search function of the website “drugstore.com” associated “moist-ones” with “wet ones.” The appeals court agreed with the district court, however, that “the fact that the computer associates ‘MOIST ONES’ with ‘WET ONES’ reflects little, if anything, about whether consumers are actually confused.” Plaintiff also argued that the evidence presented below showed that consumers who had not heard of “MOIST ONES” recognized it as a brand of pre-moistened towelettes because of the word “ONES.” The Second Circuit disagreed, however, stating that plaintiff “miss[ed] the point” because “[i]t does not matter that consumers may think, upon seeing ‘Quilted Northern Moist-ones,’ that the product is a pre-moistened towelette similar to ‘Wet Ones.’ The question is whether consumers will think that ‘Quilted Northern Moist-Ones come from the same source as ‘Wet Ones’ products.”

Ultimately, the Second Circuit agreed with the district court that plaintiff “failed to demonstrate a genuine issue of material fact about the likelihood of consumer confusion.” The court also affirmed the lower court’s dismissal of plaintiff’s dilution claims based on the dissimilarity of the marks (federal and state law) and the absence of actual dilution (federal law).

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