Second Circuit wipes away WET ONES infringement claim

In Playtex Products Inc v Georgia-Pacific Corporation, the US Court of Appeals for the Second Circuit has upheld a prior decision granting the defendant summary judgment against the plaintiff's trademark infringement claim.

Playtex Products Inc, makers of the leading pre-moistened tissue sold under the trademark WET ONES, sued Georgia-Pacific Corporation alleging trademark infringement, false designation of origin, trademark dilution and common law unfair competition arising from Georgia-Pacific's sale of a competing product under the mark QUILTED NORTHERN MOIST ONES. The US District Court for the Southern District of New York granted Georgia-Pacific's motion for summary judgment finding no likelihood of consumer confusion between the two marks. As a matter of law, the court relied on the "dissimilarity in the mark[s] themselves, the differences in the way the products are presented to consumers, and Georgia-Pacific's prominent use of its own house brand on the product's package".

On appeal, the Second Circuit affirmed the district court's decision. It considered the established factors relevant to the issue of a likelihood of confusion and found that the marks, when viewed in their entirety, were not confusingly similar.

The appellate court found WET ONES to be a strong mark, which weighed in Playtex's favour. The mark was held to be suggestive and, therefore, protectable without the need to prove secondary meaning. In addition, it reasoned that the mark had acquired distinctiveness in the marketplace as a designator of Playtex's goods and services.

The Second Circuit then compared the WET ONES mark to Georgia-Pacific's QUILTED NORTHERN MOIST ONES mark in its entirety, rather than simply to MOIST ONES as urged by Playtex. In support of its finding, the court also pointed out that the packaging included the name QUILTED NORTHERN and that MOIST ONES was never used without that name.

The court further found that Playtex had failed to offer proof of actual confusion, or evidence that Georgia-Pacific adopted its mark in bad faith, despite its knowledge of the success of Playtex's WET ONES products. Accordingly, the Second Circuit affirmed the grant of summary judgment to Georgia-Pacific and dismissal of Playtex's claims.

Christopher M Hanes, Kilpatrick Stockton LLP, Atlanta

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