Professional Documents
Culture Documents
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v.
The Procter & Gamble Company, an Ohio
corporation,
Defendant.
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Plaintiff The Dial Corporation (Dial) brings this action against Defendant The
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Procter & Gamble Company (P&G). Dial alleges as follows, upon actual knowledge
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with respect to itself and its own acts, and upon information and belief as to all other
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matters:
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trademark dilution under 15 U.S.C. 1125(c), trademark dilution under A.R.S. 44-
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For over 90 years, Dials PUREX brand of laundry products has earned its
place on supermarket and household shelves. Competing against larger brands such as
P&Gs TIDE, Dials PUREX has commanded a significant share of the laundry detergent
market. Dial has emphasized the PUR component of its famous PUREX mark through
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poised to dilute the distinctiveness of the decades-old PUREX brand and swamp Dials
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TIDE named PURCLEAN. Already, P&G has widely publicized the impending launch
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The result would be nothing short of disastrous for the PUREX brand that
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Dial and its predecessors have nurtured for decades. Many shoppers, unfamiliar with the
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corporations behind the many brands of laundry products, will assume that Tide or P&G
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owns or has swallowed-up PUREX. Even worse, shoppers may think that Dial is
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P&G was well aware of the famous PUREX mark and the companion
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PUR marks of its longstanding rival Dial when it selected the PURCLEAN mark. And
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P&G is on notice that its new PURCLEAN brand will likely create consumer confusion.
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Indeed, the U.S. Patent and Trademark Office has rejected P&Gs PURCLEAN
trademark because it conflicts with Dials prior rights and is likely to confuse consumers.
Yet P&G has ignored Dials trademark rights and the publics right to be free from
confusion.
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Dial therefore brings this Complaint to protect its valuable trademarks and
to protect the public from the confusion that will likely exist if P&G goes forward with its
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THE PARTIES
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This Court has jurisdiction over the subject matter of this action pursuant to
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15 U.S.C. 1121 and 28 U.S.C. 1331, 1338(a) and (b). This Court has supplemental
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jurisdiction over Dials state law claims pursuant to 28 U.S.C. 1367 because those
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claims are so related to their federal claims that they form part of the same case or
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This Court has personal jurisdiction over P&G and venue is proper in the
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District of Arizona pursuant to 28 U.S.C. 1391(b) and (c). P&G transacts business in
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this state, including by promoting the PURCLEAN product that violates Dials
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trademarks. In addition, Dials claims arise in part in this District, and a substantial
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portion of the activity about which Dial complains has taken place in this District.
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Further, P&G has purposefully availed itself of the privilege of acting in this District by,
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among other things, regularly conducting business in this District, including offering and
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selling its products through retail stores located in this District, advertising and promoting
its products, including the infringing PURCLEAN product, to customers in this District
and providing a website with its products through which customers in this District can
purchase P&Gs products. Venue is also proper because P&G is subject to personal
jurisdiction in this District.
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the laundry, home care, beauty, skin and body care, and personal care fields.
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brands in these categories, including PUREX laundry products, RENUZIT air fresheners,
DIAL skin and body care products, RIGHT GUARD antiperspirant products, and
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In 1922, Lionel S. Precourt and his son Ray Precourt began making their
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household bleach product out of a 400 square foot garage in Los Angeles, using their own
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homegrown recipe. The following year, they coined the mark PUREX, beginning a brand
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and a business that would last throughout the next century. Over many decades, their
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marketing organization that was among the 400 largest industrial enterprises in the
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United States.
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In the 1970s, the company expanded its use of PUREX from household
bleach to other laundry products, including powder and liquid laundry detergents.
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In 1985, Dial acquired the PUREX household and consumer product lines
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and all rights to the PUREX mark and brand. At that time, Purex Corporation had
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Dial, and its predecessors in interest, have used the PUREX mark in
numerous channels of trade on a wide variety of laundry products in the United States.
These products have included laundry detergents, fabric softeners, and bleaching agents.
Representative images of such products are shown below.
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Dial has sold many billions of dollars of products under the PUREX mark
in retail stores located throughout the United States, including national stores such as
Wal-mart, Frys, Safeway, CVS, and Walgreens, and regional or local stores such as
Albertsons, Bashas, and Food City. Dials PUREX products are sold at all of these retail
outlets in the Phoenix, Arizona area. Representative annual sales revenues of all PUREX-
branded products over several decades in the United States shows the growth of the
PUREX business: 1953, over $19 million; 1967, over $192 million; 1975, over $440
million; 1981, $650 million. These sales revenues represented sales of a wide variety of
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dishwashing liquid, and stain removers. Sales of PUREX laundry products have
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significantly increased over the years. For example, annual sales of just PUREX laundry
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products in the United States have exceeded $300M since as early as 1998 and were more
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Dial and its predecessors have expended many millions of dollars over the
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years advertising and promoting the PUREX mark through virtually every medium
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including through direct mailings, national television, print and radio advertisements, the
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Internet, and social media. In 2015 alone, Dial spent approximately $30 million to
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Dials products sold under the PUREX brand have received significant
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unsolicited media coverage for many years, including for example, in national, regional,
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and local publications and media outlets. As a result of Dials significant promotional
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efforts, commercial success, and popularity, PUREX has long been one of the bestselling laundry detergents in the United States. In a market crowded with many brandname and private-label laundry detergents, Dials PUREX commanded approximately a
5.7 % market share in 2015.
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Based on Dials longstanding and extensive use of the PUREX mark, and
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the widespread advertising, publicity, promotion, and substantial sales of products and
services under the PUREX mark, the PUREX mark is well-known and famous to the
III.
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Dial has for many years used the trademark PURECLEAN (as one or two
words) alone or in combination with other wording in connection with its laundry
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a.
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marketing materials for its PUREX laundry detergent as shown in the representative
examples below consisting of a product label and online advertising materials.
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b.
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Since 2008 and continuing to the present, Dial has featured PURECLEAN
as the lead term in the mark PURECLEAN. PUREVALUE. PUREX. for laundry
detergents and fabric softeners.
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commercials, and on Dials websites and social media pages. These efforts have reached
many millions of consumers and created many millions of consumer impressions,
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For example, from 2008 continuously to the present, Dial has prominently
featured the PURECLEAN. PUREVALUE. PUREX. mark on the packaging for certain
PUREX powder laundry detergent products as shown in the example below. Dial has sold
more than 11 million boxes of the product pictured below between 2008 and 2015,
including 7.5 million in the past four years alone. Dial has sold and distributed these
products through various channels, including laundromats, hotels, schools, hospitals, and
time-share and rental properties, among others. In laundromats, hotel laundry rooms, and
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other pay-laundry facilities, these products are typically sold in vending machines. For
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time-share and rental properties they are provided or made available to the property
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guests. In all of these examples, consumers are exposed to the prominent use of the
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Other companies detergent products, including P&Gs TIDE detergent, are also sold in
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PUREX. mark on its point-of-sale displays for PUREX laundry detergent in retail stores
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as shown in the representative examples pictured below: (a) the Daytona 500 display
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appeared in approximately 1,000 Kroger grocery stores during 2011-2012; (b) more than
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2,300 of the PUREX display units appeared in various grocery stores including
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Albertsons, Hy-Vee, and Schnucks during 2011-2012; and (c) the PUREX UltraPacks
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(b)
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In
addition,
Dial
has
prominently
featured
the
PURECLEAN.
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PUREX. mark in print advertising in 2012 in national magazines, including but not
limited to Better Homes & Gardens, People, Good Housekeeping, Parents, Family
Circle, and Womans Day. Examples of such print ads are shown below. These
publications are among the most popular magazines in the country and reach many
millions of the target consumers for PUREX laundry detergent products. These print ads
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PUREX. mark in digital advertising campaigns, i.e., internet advertising, during 2012.
Dial placed banner ads featuring the PURECLEAN. PUREVALUE.PUREX. mark on
hundreds of websites. Representative examples of such ads are shown below. These
banner ads created over 100 million consumer impressions.
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PUREVALUE. PUREX. mark on social media since as early as 2012. Shown below are
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representative posts from Dials Facebook page featuring the PURECLEAN.
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plans to further expand its already significant use of the PURECLEAN. PUREVALUE.
PUREX. mark for laundry detergent. For example, Dial has expanded its use of the
PURECLEAN. PUREVALUE. PUREX. mark on its social media pages as shown below
by the representative screenshots from its Facebook, Twitter, and Instagram pages.
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Since 2006, Dial also has used the mark PURECLEAN in connection with
its popular RENUZIT brand of air fresheners and deodorizers. Below are representative
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examples showing use of the PURECLEAN mark on such products and in product
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marketing materials.
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There has long been a connection between air fresheners and deodorizers
and laundry detergent products. Over the years, Dial has frequently sold laundry products
co-branded with Dial RENUZIT mark to identify a RENUZIT deodorizing feature of its
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laundry products (as shown in the examples below of products sold between 2006-2010).
P&G has also sold its TIDE laundry detergent and other laundry products co-branded
with P&Gs febreze mark to identify a febreze deodorizing feature as shown below.
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PUREX mark, Dial owns the following federal trademark registrations for the PUREX
mark and PUREX-formative marks covering laundry detergent and other goods (copies
of these registration certificates and assignment records showing ownership by Dial are
attached to the Complaint as Exhibit A):
Mark
PUREX
1876275
Jan. 31, 1995
Laundry bleach.
Date of First Use: October 10, 1923
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PUREX
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3094059
May 16, 2006
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PUREX
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1052724
Nov. 16, 1976
Laundry detergent.
Date of First Use: March 6, 1970
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PUREX
0578630
Aug. 11, 1953
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Mark
PUREX NO
SORT
4607365
Sept. 16, 2014
Laundry detergents.
Date of First Use: January 30, 2014
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PURECLEAN. PUREVALUE. PUREX. mark and its PURECLEAN mark, Dial also
owns the following registration and pending application for such marks (copies of the
registration and pending application and assignment records showing ownership by Dial
are attached to the Complaint as Exhibit B):
Mark
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PURECLEAN.
PUREVALUE.
PUREX.
PURECLEAN
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P&G is the largest producer of home and personal care products in the
United States and is the largest advertiser in the United States. TIDE detergent, which has
long been the best-selling detergent in the United States, is one of P&Gs best-selling and
most heavily advertised products in the United States.
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P&G announced its plans to release a new laundry detergent under the
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brand PURCLEAN in May 2016. An example of the product as advertised by P&G in its
press releases and on its websites is shown below:
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trademark as a separate mark from the TIDE trademark. On the label shown above,
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PURCLEAN appears on a separate line from TIDE and each mark is displayed in its own
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font and stylization. P&G also has placed the trademark notice TM next to the
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Specifically, P&G filed intent-to-use U.S. Application Serial No. 86785110 on October
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12, 2015 for the mark PURCLEAN covering laundry detergents (a copy of P&Gs
trademark application for the PURCLEAN mark is attached as Exhibit C).
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likelihood of confusion with Dials U.S. Registration No. 4132910 for its PURECLEAN.
assigned to review P&Gs application concluded that P&Gs mark PURCLEAN shared
PUREX. mark and that P&Gs and Dials goods were both laundry detergents (a copy of
this Office Action issued by the Examining Attorney is attached as Exhibit D).
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P&G plans to sell, promote and advertise laundry detergent under its
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PURCLEAN mark in the same trade channels as Dial, including in grocery stores, and
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The customers for both parties laundry detergent products are identical or
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have come to fruition based on: (1) its recent posting of the PURCLEAN product on its
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appearing in U.S. publications; and (3) its recent social media promotion of its
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PURCLEAN laundry detergent, including an April 22, 2016 post on Facebook promoting
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its PURCLEAN product coming soon to a store near you in May 2016 (copies of
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IV.
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approximately a 5.7% market share, TIDE dominates the product category with
approximately 42.8% share of the U.S. laundry detergent market with its TIDE and TIDE
Simply Clean products.
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mark, but P&Gs advertising of TIDE dwarfs Dials expenditures. As a result, there is a
likelihood that P&Gs massive advertising and promotional efforts will saturate the
market and dilute the distinctiveness of Dials PUREX mark. There is further the
likelihood that P&Gs massive advertising and promotional efforts for its new
PURCLEAN laundry detergent will overwhelm Dials use of its PURECLEAN Marks
and PUREX mark. As a result, consumers are likely to mistakenly believe that Dial
and/or its products sold under its PUREX mark and PURECLEAN Marks are affiliated
with, connected to, or offered by P&G, or that Dial is infringing P&Gs PURCLEAN mark.
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P&Gs use of its PURCLEAN mark in connection with the offering for
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cause mistake, or to deceive, and unless enjoined, will irreparably harm the general
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public, which has an interest in being free from confusion, mistake, and deception.
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P&Gs activities already have caused irreparable harm to Dial and Dials
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PUREX and PURCLEAN Marks, and if not enjoined, will continue to irreparably harm
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P&G began using the PURCLEAN mark more than 90 years after Dial and
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its predecessors first used its PUREX mark, and did so with knowledge of Dials prior
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use of its PURECLEAN Marks, and Dials prior use and registration of its PUREX and
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PURECLEAN. PUREVALUE. PUREX. marks. P&G knew or should have known that
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its activities described above were infringing, and thus P&G acted knowingly, willfully,
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compensate Dial for the harm to its reputation and goodwill and the loss of control over
its famous PUREX trademark and the PURECLEAN Marks that will result from P&Gs
unauthorized use of PURCLEAN.
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Dial repeats and realleges each and every allegation set forth above.
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connection with the offering, distribution, and/or advertising of laundry products, which
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knowing.
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P&Gs activities described above have at all times been willful and/or
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P&G has been unjustly enriched and has profited from appropriating the goodwill and
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Dial repeats and realleges each and every allegation set forth above.
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P&Gs actions, as described above, including without limitation the use and
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promotion of laundry detergent under its PURCLEAN mark, are likely to cause
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Dial, its products, its PUREX and PURECLEAN Marks, and/or its commercial activities
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by or with P&G, and thus constitute trademark infringement, false designation of origin,
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and unfair competition in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C.
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1125(a)(1)(A).
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knowing.
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P&Gs activities described above have at all times been willful and/or
P&G has been unjustly enriched and has profited from appropriating the goodwill and
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Dial repeats and realleges each and every allegation set forth above.
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of the PUREX mark for over 90 years. Further, Dial has had massive sales of its goods
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Dials PUREX mark has for many years received extensive unsolicited
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media attention nationwide. Such extensive and frequent media attention and commercial
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success has had a substantial impact on the public and has long created an association in
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the minds of consumers between the PUREX mark and Dial, and the PUREX mark is
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famous and was famous nationwide before P&G commenced its unauthorized use of the
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PURCLEAN mark.
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P&Gs actions described above, all occurring after PUREX mark became
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famous, are likely to cause dilution by blurring of the distinctive quality of the famous
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PUREX mark in violation of Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c).
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knowing.
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P&Gs activities described above have at all times been willful and/or
Dial and its famous PUREX mark has been damaged and will continue to be damaged.
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Dial repeats and realleges each and every allegation set forth above.
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P&Gs use of the PURCLEAN mark occurred after the PUREX mark
became famous and is likely to dilute the distinctive quality of Dials famous PUREX
mark.
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As a result of P&Gs conduct, Dial and its PUREX mark have suffered and
will continue to suffer damages and P&G has acquired profits at Dials expense.
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P&Gs conduct has caused Dial and its PUREX mark irreparable harm.
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Unless enjoined permanently, P&Gs conduct will continue to injure Dials business
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knowing.
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P&Gs activities described above have at all times been willful and/or
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Dial repeats and realleges each and every allegation set forth above.
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The actions of P&G described above have at all times relevant to this action
been willful.
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As a direct and proximate result of the actions of P&G alleged above, Dial
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WHEREFORE, Dial prays that this Court enter judgment in its favor on each and
every claim for relief set forth above and award it relief including, but not limited to, the
following:
A.
and its employees, agents, partners, officers, directors, owners, shareholders, principals,
subsidiaries, related companies, affiliates, distributors, dealers, retailers, and all persons
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names, and other identifiers that are confusingly similar to Dials PUREX and
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on or in connection with laundry detergent and related products and any associated
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format;
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names, and other identifiers that are likely to dilute Dials PUREX mark, in any
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laundry detergent and related products and any associated packaging, displays, and
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that P&G, any products or services offered by P&G, or any activities undertaken
by P&G, are authorized by, licensed by, sponsored or approved by, connected
with, guaranteed by, or produced, or otherwise affiliated with Dial or its PUREX
mark, PURECLEAN Marks, or the products sold under those marks;
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any manner, any laundry products or related products and any associated
packaging, displays, and advertising and promotional materials that bear the
PURCLEAN mark or any other mark confusingly similar to Dials PUREX and
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A.1-5 above.
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the United States all products, product packaging and displays, product inserts and
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with laundry detergents and any related goods, that display the PURCLEAN mark and/or
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any marks, names, and designs that are confusingly similar to Dials PUREX and
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PURECLEAN Marks;
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C.
An Order requiring P&G to pay Dial the cost for corrective advertising
An Order directing P&G to file with this Court and serve on Dials
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attorneys, thirty (30) days after the date of entry of any injunction, a report in writing and
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under oath setting forth in detail the manner and form in which it has complied with the
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injunction;
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E.
An Order requiring P&G to account for and to pay any and all profits
arising from the foregoing acts of infringement, false designation of origin, unfair
competition, and an increasing of such profits for payment to Dial in accordance with
15 U.S.C. 1117, and other applicable statutes and laws;
F.
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unfair competition, and trebling such compensatory damages for payment to Dial in
accordance with 15 U.S.C. 1117, and other applicable statutes and laws;
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G.
An Order requiring P&G to pay Dials costs and attorneys fees in this
action pursuant to 15 U.S.C. 1117, and other applicable statutes and laws;
H.
An Order requiring P&G to pay the costs of suit and reasonable attorneys
limitation all remedies provided for under any other applicable laws.
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JURY DEMAND
Pursuant to Fed. R. Civ. P. 38, Dial respectfully demands a trial by jury for all
claims so triable.
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