Tuesday, October 19, 2010

Northern California Judge denies preliminary injunction against cosmetic company

San Jose Federal Judge Lucy Koh denied Rodan & Fields LLC a preliminary injunction against Clinique Laboratories, LLC for trade dress infringement.  Rodan & Fields wanted to prevent Clinique from using packaging that Rodan & Fields claimed confused consumers into thinking the Clinique products were actually those of Rodan & Fields.
Clinique Products courtesy of Cinnamon Kitten
Rodan & Fields Products courtesy of Stylevise

According to Court documents, Dr. Katie Rodan and Dr. Kathy Fields created Rodan & Fields LLC to sell skincare products such as Proactive Solution. Created in 1968, Clinique offers consumers skincare products and make-up that have been “dermatologist developed” and “allergy tested.”

This case centers around the labeling of the products.  As Judge Koh explains,
To succeed on its trade dress infringement claim under Section 43 of the Lanham Act, Rodan & Fields must prove: 1) that Clinique’s trade dress creates a likelihood of consumer confusion; and 2) that Rodan & Fields’ trade dress is protectable.
Both of these would be stumbling blocks for Rodan & Fields. Judge Koh pointed out that the packaging themselves are physically different.
Rodan & Fields’ packaging consists of a vertically rectangular white cardboard bag with a flap over the top that acts as a handle.[] Clinique’s packaging consists of a transparent cellophane bag that is open, allowing the consumer to view the products in the bag which are generally packaged in celadon green and silver.[]
Even if the packaging possessed some similarity the color schemes on the packaging were different.
As to color scheme of the packaging, Rodan & Fields’ packages are two-toned, with white in the lower three-quarters, and one of four contrasting color bands in the top quarter.Clinique’s bag is transparent, and includes a cardboard insert as background, which is two-toned with white in thelower portion and one of six colors in the top portion.Both parties use color bands to distinguish product lines, but the colors used designate different functions.  For example, Rodan & Fields uses a purple contrasting band to mark its regimen for “acne and post-acne marks,” while Clinique uses a light blue color band to distinguish its “acne solutions” products.While Rodan & Fields does not use hang tags, Clinique’s packages are usually displayed with a hang tag bearing the Clinique mark.
Most importantly, the names of the companies on the packaging (as shown to the right) make the products distinctive as to avoid confusion.
Finally, the Rodan & Fields mark is prominently displayed on its packaging, once in the top color band portion of the bag, and again in the lower white portion of the bag.Clinique’s mark appears in the lower portion of the cellophane bag, on each of the products visible in the bag, and on the hang tag attached to each bag.
So what was Rodan & Fields factual basis for alleging confusion?
In its Reply Brief, Rodan & Fields changes tack, and cites to what it considers evidence of actual confusion (e.g., statements from a former Rodan & Fields Vice President and a Rodan & Fields independent consultant that the packaging is confusingly similar).
Judge Koh did noted that she did not have to address a new argument raised in a reply breif, but chose to anyway:
It is worth noting, however, that declarations from interested individuals (i.e., a former employee and an independent consultant) are not especially indicative of actual consumer confusion.
Judge Koh denied the preliminary injunction.  The case is Rodan & Fields v. Estee Lauder Co.  No. C. 10-2451 and the opinion is below the jump.

Rodan & Fields v. Estee Lauder Companies

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