World Wide Sales, Inc. v. Church & Dwight Co., Inc., No. 08 C 1198, Slip Op. (N.D. Ill. Nov. 9, 2009) (Kennelly, J.).
Judge Kennelly granted defendant Church & Dwight (“CD”) summary judgment on each of plaintiff World Wide Sales’ (“WWS”) claims for trademark infringement, Lanham Act unfair competition and fraud on the Patent and Trademark office. WWS claimed that CD infringed and unfairly competed with WWS’s Forever Fresh for the Fridge trademark, used with a refrigerator odor elimination product, by using CD’s Fridge Fresh mark with its Arm & Hammer refrigerator deodorizer product.
The parties stipulated that CD’s mark was protectable for purposes of this motion. The only issue, therefore, was whether there was a likelihood of confusion. Generally, a court would consider whether consumers believed CD’s mark referred to WWS’s product. But WWS relied upon a theory of reverse confusion, arguing that CD had so saturated the market with its junior mark that consumers believed WWS’s products were CD’s products. Courts apply the same likelihood of confusion factors in both reverse confusion and confusion cases, although the factors are weighted differently:
- Similarity of Products. The products had similar deodorizing uses, but they were presented so differently that there was little chance of consumer confusion.
- Degree of Similarity. Beyond both using “Fridge” and “Fresh” the marks were not similar. Among other things, WWS’s mark was surrounded by pictures of refrigerated food stored with or without its product, CD’s mark was against a yellow-orange background, similar to other Arm & Hammer products without any pictures of food. The factor weighed strongly in CD’s favor as it was “extraordinarily unlikely” that consumers would be confused.
- Use and Manner of Concurrent Use. The parties’ distribution channels were vastly different. WWS offered no evidence of the products being sold in the same store or advertised in the same publication.
- Strength of Mark. WWS’s mark was descriptive and relatively little had been invested in promoting the mark. As a result, the Court held that the mark was relatively weak.
- Consumers’ Degree of Care. While the products at issue were relatively inexpensive, the Court still held that there was little chance consumers would confuse the products.
- CD’s Intent. Because the junior user does not seek to profit from the senior user’s mark in reverse confusion cases, CD’s intent was irrelevant.
- Actual Confusion. WWS offered no evidence of actual confusion.
Based upon the factors, the Court held that no reasonable fact finder could find a likelihood of confusion.
Fraud on the PTO
Because WWS’s registration disclaimed the exclusive use of “fridge” and “fresh,” no reasonable fact finder could have found that CD lacked a reasonable belief that “fridge” and “fresh” were unprotected words. And therefore, failing to disclose WWS’s "Forever Fresh for the Fridge" registration to the PTO during the prosecution of CD’s "Fridge Fresh" mark was not fraud.