Bristol-Myers (Bm) V Mcneil

Bristol-Myers (BM) v McNeil

I. Question

a. BM sues McNeil over its use of the term “PM” and its trademark dress likely to confuse consumers, who should prevail?

II. Facts

b. BM manufactured Excedrin PM prior to McNeil introduction of Tylenol PM which combines an analgesic with a sleep aid. BM claims this causes confusion under the Lanham Act. The Lanham Act states the following:

i. (a) Civil action

1. “Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, “ (15 U.S. Code § 1125)

c. BM did not conduct survey to establish effect of McNeil’s alleged infringement. Also, to be entitled to trademark protection, the descriptive term must have secondary meaning. In order to establish secondary meaning, the plaintiff must demonstrate that in the minds of the consumer, the primary significance of the product feature is to identify the source of the product rather than the product itself.

d. There is a strong similarity of Tylenol PM to Excedrin PM in trade dress.

III. Analysis

e. The Tylenol PM Trade dress shares many of the attributes with the Excedrin PM trade dress. Both products have the PM designator on the same line as the trade name. The question is not quantity of points that are similar but rather if the two products create the same impression to the consumer thus contributing to consumer confusion. In this case involving Excedrin PM the most prominent feature is the...