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Novartis Consumer Health, Inc. v. McNeil-PPC

UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY


September 14, 1999

NOVARTIS CONSUMER HEALTH, INC.,
PLAINTIFF,
V.
MCNEIL-PPC, INC.,
DEFENDANT.

The opinion of the court was delivered by: William H. Walls, U.S.D.J.

FOR PUBLICATION

OPINION

Walls, District Judge

I. Introduction

This matter is before the Court on the summary judgment motions of defendant McNeil-PPC, Inc. ("McNeil") to dismiss the complaint and for judgment in its favor on its counterclaim, and of plaintiff Novartis Consumer Health Inc. ("Novartis") to dismiss McNeil's counterclaim. McNeil's motion for summary judgment was originally scheduled for April 26, 1999, but this Court granted Novartis's request for a stay pending the completion of discovery until July 26, 1999. The parties submitted additional material on McNeil's summary judgment motion, Novartis moved for summary judgment to dismiss McNeil's counterclaim, and McNeil cross- moved for summary judgment on its counterclaim. The Court granted Novartis's motion for an additional stay pending the resolution of certain discovery issues. The motions were stayed until now, September 13, 1999.

Defendant's motion for summary judgment to dismiss the complaint is granted. Defendant's counterclaim is dismissed for failure to state a claim upon which relief may be granted.

II. Background

On January 20, 1999, Novartis sued McNeil for trademark infringement, false designation of origin and unfair competition based on defendant's unauthorized use of the mark Soft-Chews. Novartis is the manufacturer of the Triaminic brand of over-the-counter pharmaceutical products which includes cough, cold, allergy, and sinus products. McNeil, a division of Johnson & Johnson, is the manufacturer of the Tylenol brand of over-the-counter acetaminophen based pain relievers and fever reducers. Novartis manufactures a line of Triaminic products for children in the form of soft, chewable, fast-dissolving tablets under the Softchews mark. (See Compl. Ex. A.) Novartis is the owner of a registration on the Supplemental Register of the United States Patent and Trademark Office ("PTO") for its SOFTCHEWS *fn1 mark for "cough, cold, allergy and sinus pharmaceutical preparation" (Reg. No. 1,979,054) which issued on June 4, 1996. (Compl. ¶ 7, Ex. B.) McNeil has marketed a line of Tylenol pain-relieving and fever-reducing products for children under the mark Soft-Chews. (See Compl. Ex. D.)

Plaintiff's mark softchews is registered with the PTO, not on the Principal Register, but on the Supplemental Register. Plaintiff's predecessor, Sandoz Corporation, had initially applied for registration of the term "soft chews" with the PTO on the Principal Register on April 5, 1995 on the basis of its intent to use the mark-it had not yet used the mark. (Reynolds Decl. Ex. A.) On September 11, 1995, the PTO refused registration of the proposed mark on the Principal Register because it "merely describe[d] the goods." (PTO Office Action, Reynolds Decl. Ex. A.) The PTO explained that "[t]he proposed mark SOFT CHEWS appears to indicate that the goods are soft and for chewing." (Id.) On February 15, 1996, Novartis filed an "Amendment to Allege Use" with the PTO in which it declared that it had used the mark "soft chews" in commerce since November 29, 1995. (Reynolds Decl. Ex. A.) On March 1, 1996, Novartis amended its application to register the term "softchews" rather than "soft chews" on the Supplemental rather than Principal Register. (Id.) The mark "softchews" was registered on the Supplemental Register on June 4, 1996. (Id.; Reg. No. 1,979,054.)

Novartis claims that McNeil's use of the term Soft-Chews is a copy or colorable imitation of its registered softchews mark in violation of § 32(c) of the Lanham Act, 15 U.S.C. § 1114(1). Novartis also claims that McNeil's prominent use of Soft-Chews in its advertising and promotions conveys the misleading commercial impression to the public that McNeil's pharmaceutical products are affiliated, connected, or associated with those of Novartis and creates a false or misleading designation of origin in violation of § 43(a)(1) of the Lanham Act, 15 U.S.C. § 1125(a)(1). Plaintiff also claims reverse confusion--that defendant's use of the mark creates a likelihood of confusion and leads the public to believe that the plaintiff, not the defendant, is the trademark infringer. Finally, plaintiff claims that defendant has violated the New Jersey Unfair Competition statute, N.J.S.A. § 56:4-1 and the New Jersey common law prohibiting trademark infringement and unfair competition.

On February 26, 1999, McNeil filed a counterclaim against Novartis under § 14 of the Lanham Act, 15 U.S.C. § 1064 for cancellation of a fraudulently obtained trademark registration. McNeil asserts that Novartis initially sought to register the term "soft chews" on the Principal Register of the PTO on the basis of an intent to use application-an application for registration of a mark that the applicant has yet to use but intends to use in the future. An applicant may apply for registration on the Principal Register, but not on the Supplemental Register, on the basis of intended use. McNeil claims that Novartis's later amendment of its application alleging that it had first used the "soft chews" mark on November 29, 1995 was false and that its registration of the mark "softchews" on the Supplemental Register was therefore fraudulently obtained. McNeil alleges that Novartis did not make any actual, bona fide use of the "soft chews" mark in commerce until about July, 1998. McNeil charges Novartis with fraudulently obtaining registration of the "softchews" mark on the Supplemental Register and claims that it has been damaged by this fraudulently obtained registration.

Defendant McNeil has moved for summary judgment to dismiss the complaint on the grounds that softchews is not a legally protectable mark and there is no likelihood of confusion between Children's Tylenol Soft-Chews and Triaminic Softchews. McNeil argues that softchews is a generic term, or in the alternative, that it is merely descriptive and that it has not acquired distinctiveness through secondary meaning. Novartis responds that softchews is a suggestive, not a generic or descriptive term. Novartis also says that softchews has acquired secondary meaning and there is a likelihood of confusion between plaintiff's softchews and defendant's soft-chews.

Plaintiff Novartis moves for summary judgment dismissal of McNeil's counterclaim and McNeil cross-moves for summary judgment on its counterclaim. Novartis argues that its November 29, 1995 shipment of Softchews constituted a "use in commerce" under § 45 of the Lanham Act and that McNeil cannot prove fraud. McNeil maintains that proof of fraudulent intent is not required to cancel a trademark on the Supplemental Register or to recover damages, and that even if it were required to show fraudulent intent, it has met its burden. Moreover, McNeil contends that Novartis's one-time product test on November 29, 1995 does not constitute a bona fide use in commerce under the trademark laws.

III. Discussion

A. Summary Judgment Standard

Summary judgment is appropriate where the moving party establishes that "there is no genuine issue of fact and that [it] is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). A factual dispute between the parties will not defeat a motion for summary judgment unless it is both genuine and material. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). A factual dispute is genuine if a reasonable jury could return a verdict for the non-movant and it is material if, under the substantive law, it would affect the outcome of the suit. See Anderson, 477 U.S. at 248. The moving party must show that if the evidentiary material of record were reduced to admissible evidence in court, it would be insufficient to permit the non-moving party to carry its burden of proof. See Celotex v. Catrett, 477 U.S. 317, 318, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986).

Once the moving party has carried its burden under Rule 56, "its opponent must do more than simply show that there is some metaphysical doubt as to the material facts in question." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S. Ct. 1348, 89 L. Ed. 2d 538 (1986). The opposing party must set forth specific facts showing a genuine issue for trial and may not rest upon the mere allegations or denials of its pleadings. See Sound Phillip Ship Building Co. v. Bethlehem Steel Co., 533 F.2d 96, 99 (3d Cir. 1976), cert. denied, 429 U.S. 860 (1976). At the summary judgment stage the court's function is not to weigh the evidence and determine the truth of the matter, but rather to determine whether there is a genuine issue for trial. See Anderson, 477 U.S. at 249. In doing so, the court must construe the facts and inferences in the light most favorable to the non-moving party. See Wahl v. Rexnord, Inc. 624 F.2d 1169, 1181 (3d Cir. 1980).

B. Plaintiff's Claims under the Lanham Act, the New Jersey Trademark Act, and under New Jersey Common Law

Defendant McNeil argues that plaintiffs' claims under sections 32(c) and 43(a) of the Lahnham Act fail because the softchews mark is not a valid and legally protectable mark and because there is no likelihood of confusion between Children's Tylenol Soft-Chews and Triaminic Softchews. Specifically, defendant McNeil contends that because Novartis registered softchews on the Supplemental Register, the mark is not entitled to any statutory presumption that it is a trademark and not a generic name. McNeil maintains that softchews is a generic term, or at best a descriptive one that has not acquired secondary meaning. Novartis argues that the mark is suggestive, that it has acquired secondary meaning, and that McNeil's use of the mark is likely to create confusion as to the origin of Novartis's product.

To prevail on a claim for trademark infringement or false designation of origin under §§ 32(c) or 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a), a plaintiff must establish that: "(1) the mark is valid and legally protectable; (2) the mark is owned by the plaintiff; and (3) the defendant's use of the mark to identify goods or services is likely to create confusion concerning the origin of the goods or services." Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466, 472, 473 (3d Cir. 1994) (citing Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 291 (3d Cir.), cert. denied, 502 U.S. 939, 112 S.Ct. 373, 116 L.Ed.2d 324 (1991)). The requirements for a successful claim under the New Jersey Trademark Act, N.J.S.A. 56:4-1 or trademark infringement under New Jersey common law are the same. Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F. Supp. 1084, 1091 (D.N.J. 1997) ("N.J.S.A. 56:4-1 is the statutory equivalent of Section 43(a)(1) of the Lanham Act and the analysis for trademark infringement under New Jersey common law is the same as under Section 43(a)(1) [of the Lanham Act]"). Here, defendant McNeil contests the validity and protectability of the mark as well as the likelihood that its use of the mark may create confusion as to the origin of plaintiff's product.

1. Whether Softchews Is a Legally Protectable Mark

That plaintiff's mark is registered on the Supplemental Register rather than the Principal Register has definitive legal significance. Registration of a mark on the Principal Register provides "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate" of registration. 15 U.S.C. § 1057(b). Registration of a mark on the Supplemental Register, however, does not entitle a mark to this statutory presumption. 15 U.S.C. § 1094 ("applications for and registrations on the supplemental register shall not be subject to or receive the advantages of sections 1051(b), 1052(e), 1052(f), 1057(b), 1057(c), 1062(a), 1063 to 1068, inclusive, 1072, 1115 and 1124 of [Title 15]." Unlike Principal Registration, "Supplemental Registration creates no substantive rights." 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:37 at 19-75 (4th ed. 1998). However, one benefit conferred by Supplemental Registration is that "questions of validity, ownership and infringement of Supplemental Registrations are governed by federal law," and a suit for the infringement of a mark registered on the Supplemental Register may be brought in federal court, "along with a related claim of unfair competition." Id.

To be registered on the Principal Register, a mark must be a trademark, that is, "any word, name, symbol, or devise, or any combination thereof" which a person uses or has a bona fide intention to use in interstate commerce, "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even in that source is unknown." 15 U.S.C. § 1127. A "trademark by which the goods of the applicant may be distinguished from the goods of others" may be registered on the Principal Register unless it, inter alia, "when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them," or "comprises any matter that, as a whole, is functional." 15 U.S.C. § 1052. "Eligibility for registration on the Supplemental Register, 15 U.S.C. § 1091, requires that the term does not meet the requirements of registration on the Principal Register but is deemed capable of achieving an association with the source of the product." In re Bush Brothers & Co., 884 F.2d 569 (Fed. Cir. 1989); 15 U.S.C. § 1091. In addition, to be registered on the Supplemental Register, a mark must be "in lawful use in commerce by the owner thereof, on or in connection with any goods or services." 15 U.S.C. § 1091(a). A bona fide intent to use the mark in commerce does not satisfy the "use in commerce" requirement for registration on the Supplemental Register. 3 McCarthy, supra, § 19:33 at 19-72 (4th ed. 1998). Although 15 U.S.C. § 1095 provides that "[r]egistration of a mark on the supplemental register shall not constitute an admission that the mark has not acquired distinctiveness.," there is nothing in the Lanham Act "to preclude Supplemental Registration from being deemed an admission against interest that the term is not inherently distinctive." Id. § 19:35 at 19-73. The "very presence [of a mark] on the Supplemental Register indicates a preliminary determination that the mark is not distinctive of the applicant's goods." Id. § 19:36 at 19- 75.

If a mark has not been registered on the Principal Register, it may nonetheless be valid and legally protectable "if the public recognizes it as identifying the claimant's `goods or services and distinguishing them from those of others.'" A.J. Canfield Co. v. Honickman, 808 F.2d 291, 296 (3d Cir. 1986)(quoting 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15.1 at 657 (2d ed. 1984)). The validity of a mark which has not been registered on the Principal Register "depends on proof of secondary meaning, unless the unregistered mark is inherently distinctive." Fisons, 30 F.3d at 472.

The distinctiveness of a mark is measured along a continuum, "from the nondistinctive to the inherently distinctive: Marks are (1) generic, (2) descriptive, (3) suggestive[,] (4) arbitrary, or [(5)] fanciful." Harlem Wizards, 952 F. Supp. at 1092; Canfield, 808 F.2d at 296. In Harlem Wizards, this Court described this continuum:

A generic term functions as the common descriptive name of a class of products and [is] generally not legally protectable. . . . A descriptive mark immediately conveys a characteristic, ingredient or quality of the article or service it identifies and acquires protected status only if the plaintiff can demonstrate that the goods or services have achieved secondary meaning. . . . Suggestive, arbitrary and fanciful marks are afforded the highest level of trademark protection. . . . A suggestive mark requires the consumer to use imagination, thought, or perception to determine the character of the goods or service. . . . An arbitrary mark employs terms that do not describe or suggest any attribute of goods or services sold and a fanciful mark uses unfamiliar language coined expressly for the purpose of trademark protection. Harlem Wizards, 952 F.Supp. at 1092-1093 (internal citations omitted); Canfield, 808 F.2d at 296.

A term which is descriptive but has acquired secondary meaning, suggestive, arbitrary, or fanciful is legally protectable. See Canfield, 808 F.2d at 292. A mark which is generic or is "descriptive but lacks sufficient secondary meaning" is not protectable. Canfield, 808 F.2d at 292. Although a generic term may acquire secondary meaning, it is not protectable. Canfield, 808 F.2d at 297. A generic mark "is never protectable because even complete `success . . . in securing public identification . . . cannot deprive competing manufacturers of the product of the right to call an article by its name.' Therefore, evidence that a generic term is identified with one producer, indicative of a secondary meaning for a descriptive term, proves only what courts call `de facto' secondary meaning." Canfield, 808 F.2d at 297 (quoting Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976)). Because a mark not registered on the Principal Register has no presumption of validity or legal protectability, Novartis bears the burden to prove that softchews is descriptive and has acquired some secondary meaning or that it is suggestive. Canfield, 808 F.2d at 297.

a. Whether Softchews is Suggestive

As Judge Becker iterated in Canfield:

A term is suggestive if it requires imagination, thought or perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods. 808 F.2d at 297 (quoting Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 295 F.Supp. 479, 488 (S.D.N.Y. 1968) (citing 1 McCarthy, McCarthy on Trademarks and Unfair Competition § 11:21, at 491- 92 (2d ed. 1984)). Novartis argues that its mark softchews is suggestive because it requires some imagination, thought, and perception to determine the characteristics of the softchews product-that it is a "good tasting, easy-to-take, quick dissolving tablet." (Pl.'a Supp. Mem. in Opp. to Def.'s Mot. for Summ. J. at 20.) Novartis asserts that neither the word "soft" nor the word "chews" conveys the actual characteristics of its softchews product. Novartis maintains that its softchews product is neither soft nor chewable. (Id. at 17-19).

Novartis's argument is unpersuasive. The plaintiff in Canfield made a similar argument which was rejected by the Third Circuit. There, the plaintiff Canfield had named its diet soda with a chocolate fudge flavor "Diet Chocolate Fudge Soda." Canfield sued a competing company which later came out with its own "Chocolate Fudge Soda" for trademark infringement. Canfield argued that the term "diet chocolate fudge soda" was suggestive because its soda did not have the taste of chocolate fudge and had neither the ingredients nor the texture of chocolate fudge. Our Circuit Court found that "[b]ecause chocolate fudge denotes a flavor, no imagination is required for a potential consumer to reach a conclusion about the nature of Canfield's soda." 808 F.2d at 298. The court went on to say, "[t]o the extent Canfield claims that its soda simply does not have the taste of chocolate fudge . . . all such a fact would prove is that Canfield has misdescribed its product. Even if Canfield's soda does not have the taste of chocolate fudge, Canfield does not have the right to prevent others from advertising their soda as having that taste." Canfield, 808 F.2d at 308.

Similarly, here, no imagination is required for a potential customer to reach a conclusion about the nature of Novartis's product-that it is a chewable, relatively soft tablet. Novartis argues that neither its product nor McNeil's product is soft or chewable. However, Novartis admits that the McNeil's product is chewable "because it easily `crunches' or breaks up under pressure from a child's teeth. The child does not need to swallow the tablet whole, but can easily break it up." (Pl.'a Supp. Mem. in Opp. to Def.'s Mot. for Summ. J. at 17.) Novartis argues that its softchews tablets are not soft because by definition, a tablet is a hard, solid or solidified substance. (Id.) However, when Novartis hired an outside company, Brand Institute to develop a name for its new product, it described the product as "a new soft tablet" that "is very easy to chew and quickly dissolves in the mouth." (Reynolds Supp. Declaration Ex. DX 35 at 74.) Novartis's argument disproves its point. Novartis has employed the term softchews to describe a new form of tablet-one that is soft and chewable as opposed to the hard, chewable tablet that it replaced. That softchews tablets are softer than regular hard tablets and chewable is denoted by the term "softchews." Moreover, to the extent that Novartis argues that its product is neither soft nor chewable, Novartis "has misdescribed its product." Canfield, 808 F.2d at 308. Even if Novartis's product is not soft and chewable, Novartis "does not have the right to prevent others from advertising" their product has having those qualities. 808 F.2d at 308. Softchews is not a suggestive mark.

b. Whether Softchews is Generic or Descriptive

To resay, a descriptive term "describe[s] a characteristic or ingredient of the article to which it refers," and a generic term "function[s] as the common descriptive name of a product class." Canfield, 808 F.2d at 296. A descriptive term is only protectable if there is proof that it has acquired secondary meaning. A generic term is not legally protectable even if it has acquired a secondary meaning.

McNeil contends that softchews is a generic term which is not legally protectable. Novartis claims that generic terms may not be registered on the Supplemental Register and therefore, its registration of the term is strong evidence that softchews is not generic. As support for this proposition, Novartis relies on Judge Becker's decision in Canfield, 808 F.2d at 297. However, Judge Becker wrote nothing about the Supplemental Register. Supplemental Registration does not entitle a term "to any statutory presumption that the term is a trademark and not a generic name: `In fact, it is not prima facie evidence of anything except that the registration issued.'" 3 McCarthy, supra, § 19:36 at 19-74 (4th ed. 1998) (quoting In re Medical Disposables Co., 25 U.S.P.Q.2d 1801, 1805 (T.T.A.B. 1992)).

The traditional test used by courts to determine if a term is generic is the primary significance test developed by the Supreme Court in Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73(1938) and codified by Congress in the Trademark Clarification Act of 1984, 15 U.S.C. § 1064. Under this test, a term is generic unless "the primary significance of the term in the minds of the consuming public is not the product but the producer." 305 U.S. at 118, 59 S. Ct. at 113. In its codified version, "`the primary significance' test is met even if the primary significance of a mark is not directly the producer but rather if `the primary significance of the mark to consumers . . . is to identify a product or service which emanates from a particular source, known or unknown,' for it still provides the assurance to the public `that the product is of uniform quality and performance.'" Canfield, 808 F.2d at 300 (quoting S. Rep. No. 98-627, 98th Cong., 2d Sess., 5 (1984)). A term may satisfy the primary significance test if it "signifies a product that emanates from a single source, i.e., a product brand, but . . . not . . . if the product that emanates from a single source is not only a product brand but is also a product genus." Canfield, 808 F.2d at 301. In Canfield, Judge Becker noted that the primary significance test does not provide a means to differentiate between a product brand and a product genus. 808 F.2d at 301. However, the definition of the relevant product genus or category is crucial because "`[a] generic term is one that refers to the genus of which the particular product is a species.'" Canfield, 908 F.2d at 298 (quoting) Park `N Fly v. Dollar Park and Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 661, 83 L.Ed.2d 582 (1985). "[C]ongruent with general principles of trademark law and the primary significance test," the Third Circuit developed a new test to define the product class and determine whether a term is generic:

If a producer introduces a product that differs from an established product class in a particular characteristic, and uses a common descriptive term of that characteristic as the name of the product, then the product should be considered its own genus. Whether the term that identifies the product is generic then depends on the competitors' need to use it. . . . At the least, if no commonly used alternative effectively communicates the same functional information, the term that denotes the product is generic. Canfield, 808 F.2d at 305-306. This test is consistent with the notion that a party cannot "`seize upon one of the primary characteristics that make an unpatented commercial product marketable and preempt or limit competitor reference' by registering it." Canfield, 808 F.2d at 306 (quoting Devon Corp. v. Woodhill Chemical Sales Corp., 455 F.2d 830, 832 (1st Cir. 1972).

Accordingly, this Court must determine the relevant product genus for softchews. Defendant McNeil insists that soft, chewable tablets are the product category. Its position is that softchews, like geltabs, gelcaps, and softgels, is a generic name for a new dosage form. (Def.'s Mem. of Law in Supp. of Mot. for Summ. J. at 15.) McNeil notes that the term "soft chew" has been used by other companies as well to describe a soft, chewable tablet. (Id. at 15 n.1) For example, in June, 1997, Fuisz Technologies announced that it had been granted a patent on its "soft chew tablet" technology, and in September, 1997, it launched a calcium soft chew nutritional supplement. (McComb Decl. ¶ 15, Ex. I.) On the other hand, plaintiff Novartis argues that softchews is a brand name, that it "is a coined word that was made up specifically for a new brand of chewable tablets to be sold by the plaintiff and is a term that is not likely to be found in a dictionary." (Pl.'s Supp. Mem. in Opp. to Def.'s Mot. for Summ. J. at 8.) Novartis maintains that the product category is not soft, chewable tablets but chewable tablets or fast dissolving or quick dissolving tablets. (Pl.'s Mem. in Opp. to Def.'s Mot. for Summ. J. at 9-10.) Novartis contends that McNeil's use of the term soft-chews indicates that it is not generic because "soft-chews" is featured in large styled print on its Tylenol labels whereas generic terms such as "tablets" and "concentrated drops" appear in plain print letters arranged in a straight line beneath the Tylenol mark. (Id. at 10.) McNeil replies that the type size of "soft-chews" is immaterial, and that it uses the term "soft-chews" the same way it uses other descriptors such as "caplets," "gelcaps" and "geltabs." (Def.'s Supp. Mem. of Law in Supp. of Mot. for Summ. J. at 20.) Moreover, McNeil argues, third parties such as retailers use the term "softchews" in advertisements and coupons for Triaminic as a general dosage form descriptor like the term "liquid," as in "Triaminic Liquid or Softchews." (Id.)

Here, plaintiff Novartis introduced a soft, chewable tablet form which differed from the other types of chewable tablets on the market in that it was softer than the hard chewable tablets. Novartis used the combination of two common terms descriptive of the soft and chewable characteristics of its new tablets to form the term "softchews." That the tablets also dissolve quickly and easily is inapposite because the distinguishing characteristic of Novartis's product is that it is soft and chewable. As Novartis has pointed out, a number of companies make tablets that dissolve quickly and sell them under marks such as: QUICKLETS, KIDMED, KIDMELT, WOWTAB, ORASOLV, FLASH DOSE, and EZ CHEW. (Cohen Decl. ¶ 10, Ex. B.) Novartis has introduced a product that differs from an established product class in a particular characteristic, and used a common descriptive term of that characteristic as the name of the product. Canfield, 808 F.2d at 308. The relevant product genus is soft, chewable tablets.

Next, we must examine the need of Novartis's competitors to use the term "softchews." McNeil contends that there is no name other than softchews that effectively communicates the functional information that its tablets are soft and chewable. Novartis refers to the above registered marks which have been used as designations for fast-dissolving chewable tablets. McNeil contends that none of these trademarks effectively communicates the functional attributes of a soft, chewable tablet. McNeil is correct. Because none of the commonly used marks effectively communicates the functional information that a tablet is soft and chewable, this Court finds the term "softchews" to be generic. That soft, chewable tablets may have other generic designations is irrelevant because, "[a]ny product may have many generic designations. Any one of those is incapable of trademark significance." 2 McCarthy, McCarthy on Trademarks and Unfair Competition § 12:9, at 12-18 (4th ed. 1998); Clairol, Inc. v. Roux Distributing Co., Inc., 280 F.2d 863 (C.C.P.A. 1960).

Because softchews is a generic term, it follows that plaintiff does not have a legally protectable mark. Plaintiff cannot satisfy the requirements of a claim for trademark infringement, false designation of origin, or unfair competition under §§ 32(c) or 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a), under New Jersey common law, or under the New Jersey Trademark Act, N.J.S.A. 56:4-1. Defendant's motion for summary judgment to dismiss plaintiff's complaint is granted.

C. McNeil's Counterclaim for Cancellation of a Fraudulently Obtained Trademark Registration

McNeil has filed a counterclaim under section 14 of the Lanham Act, 15 U.S.C. § 1064 to cancel Novartis's registration of "softchews" on the Supplemental Register. However, 15 U.S.C. § 1064 applies only to the cancellation of marks on the Principal Register, not to marks on the Supplemental Register. 15 U.S.C. §§ 1064, 1094. Section 1094 of 15 U.S.C. explicitly excludes registrations on the Supplemental Register from the application of 15 U.S.C. § 1064. Although McNeil acknowledges that 15 U.S.C. § 1064 does not apply to cancellations of Supplemental Registrations, it has not amended its counterclaim to apply for cancellation of the registration under 15 U.S.C. § 1092, the section which governs cancellations of Supplemental Registrations. Because 15 U.S.C. § 1064 does not apply to Supplemental Registrations, McNeil's counterclaim is dismissed for failure to state a claim upon which relief may be granted.

IV. Conclusion

Defendant McNeil's motion for summary judgment to dismiss the complaint is granted. Defendant McNeil's counterclaim is dismissed.

ORDER

This matter is before the Court on the summary judgment motions of defendant McNeil-PPC, Inc. ("McNeil") to dismiss the complaint and for judgment in its favor on its counterclaim, and of plaintiff Novartis Consumer Health Inc. ("Novartis") to dismiss McNeil's counterclaim. The Court having heard oral argument on September 13, 1999, having considered the submissions of the parties, and for the reasons stated in the accompanying opinion,

It is on this 14th day of September, 1999:

ORDERED that defendant's summary judgment motion to dismiss the complaint is granted;

ORDERED that defendant's counterclaim is dismissed for failure to state a claim upon which relief may be granted.

William H. Walls, U.S.D.J.


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