It is no wonder that two companies manufacturing detergents would want to use the word “clean” for their products and brand. The Dial Corporation (“Dial”) owns the federally registered trademark PURECLEAN that it used to market its PUREX detergents. To protects its mark, Dial sued the Procter & Gamble Company (“P&G”) to enjoin it from launching its TIDE “PURCLEAN” line of detergents.
The complaint contains numerous other examples of use of PUREX in ads, coupons, magazines, on products, displays at point of sale, and others. For example, below shows Dial’s use of PureClean® with the PUREX branded product.
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Specifically, Dial alleges that P&G’s use of the “PURCLEAN” mark to sell laundry detergents is likely to cause confusion, cause mistake, or to deceive. Dial contends that it has already suffered irreparable harm to itself and its PUREX and PURECLEAN Marks, and if not stopped Dial and its Marks will continue to be harmed. Money damages cannot 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&G’s unauthorized use of PURCLEAN.
This is not the first battle between Dial and P&G. The sudsy dispute started at the USPTO when P&G filed an intent-to-use application for the “PURCLEAN” mark. The USPTO recently sided with Dial and issued a refusal of this application based on a likelihood of confusion with Dial’s registered trademark and slogan for PURECLEAN, PUREVALUE and PUREX marks. The Examining Attorney found that the proposed PURCLEAN mark shared the “identical phonetic equivalent wording” with Dial’s Ma and that P&G’s and Dial’s goods were both laundry detergents. Will the Arizona federal court agree with the USPTO?
Dial asserts that it’s PUREX trademark is famous. It has sold many billions of dollars of products under the PUREX mark in retail stores. The company and its predecessors have expended millions of dollars over the years advertising and promoting the PUREX mark. Dial further asserts it had plans to further expand its already significant use by expanding its social medial in Facebook, Twitter and Instagram pages.
Dial also uses the PURECLEAN mark in connection with its popular RENUZIT brand of air fresheners and deodorizers. It is an important brand for the company.
Dial asserts TIDE dominates the laundry detergent product category with 42.8% share of the U.S. laundry detergent market with TIDE and its TIDE Simply Clean products. P&G’s massive advertising of TIDE “dwarfs Dial’s expenditures.” “As a result, there is likelihood that P&G’s massive advertising and promotional efforts will saturate the market and dilute the distinctiveness of Dial’s PUREX mark.
Will the Court believe that this irreparable harm will happen and an injunction is needed?