P&G SUING CUSTOMER, OTHERS ON TRADE DRESS INFRINGEMENT

LISA A. TIBBITTS

CINCINNATI -- Procter & Gamble filed suit Sept. 7 against F&M Distributors, Warren, Mich., charging F&M with selling private-label products with designs that infringe on P&G brands, marking the first time such a prominent manufacturer has sued a retailer who is simultaneously its customer.

The five brands P&G claims are being mimicked are: Pantene Pro-V and Head & Shoulders shampoos; Secret and Sure antiperspirants and deodorants, and Noxzema cleansing cream.

"We don't want to confuse consumers. We don't want these packages. If you went down the aisle of a grocery store, it's certainly conceivable that you would throw that in your cart, believing it is a Procter & Gamble brand, when it isn't," said Carol A. Boyd, P&G's group manager of public relations.

Although this is the 12th lawsuit filed by P&G this year for package, trademark or patent infringement, it is the first time the company has sued one of its own customers.

"In this particular case, we knew there were several different manufacturers supplying F&M. And because it was such an egregious violation in our minds and because there were several different manufacturers involved, it made sense to sue F&M," said Boyd.

Paul Fields, a partner who handles trade dress issues for the law firm Darby & Darby, New York, said more trade dress suits are being filed now because the U.S. Supreme Court ruled that manufacturers' nationally branded trade dress can be protected if it is inherently distinctive. "There have been many more trade dress suits being decided in favor of the plaintiff," he said.

F&M, a chain of 124 deep discount drug stores in the Midwest and on the East Coast, claims its package designs meet the criteria for differentiation between products. "They're not similar. You'd have to see the products live. You'd have to see the color differentials and the labeling differentials," Laura Kendall, F&M's chief financial officer, told SN.

The Private Label Manufacturers Association would not comment on the suit.

P&G is also suing the products' manufacturers who supply F&M. It has filed suit against Cumberland-Swan, a subsidiary of Perrigo, Allegan, Mich., the leading manufacturer of health and beauty care private-label products in this country, for producing what it claims are imitations of Head & Shoulders, Secret, Sure and Noxzema.

Evron Industries, Chicago, is being sued for producing shampoo in a package resembling that of P&G's Pantene Pro-V.

Kendall said she hopes the suit will be settled out of court. "It's just a situation of packaging design and we feel the two companies have had a longstanding relationship and we should be able to work that out."