Procter & Gamble Co. v. Johnson & Johnson Inc.

I. Introduction.

This is an action for trademark infringement, false designation of origin, unfair competition and trademark dilution. 1 The plaintiff, Procter & Gamble Co. (“P&G”), an Ohio corporation, is one of the country’s largest manufacturers of household and personal use products. The defendants are Johnson & Johnson Incorporated (“J&J”) and its wholly-owned subsidiary Personal Products Company (“PPC”), both New Jersey corporations. PPC is the leading manufacturer of women’s external menstrual protection products. The case raises interesting questions.

*1190 The defendants’ trademarks which are alleged to infringe rights of the plaintiff are “Assure!” as used on a woman’s menstrual tampon, and “Sure & Natural”, as used on an external menstrual protection shield.

The plaintiff’s marks alleged to be infringed are “Sure” for an underarm antiperspirant deodorant and for a woman’s tampon, and “Assure” for a mouthwash and a shampoo.

Plaintiff seeks damages and injunctive relief. Defendants deny plaintiff’s allegations and seek an order directing the cancellation of P&G’s registration of the Sure tampon and Assure mouthwash and shampoo trademarks. 2

Trial consumed 16 days and was completed last Thursday, December 20. For reasons of commercial urgency, the parties have requested a speedy decision.

I congratulate counsel on both sides for careful preparation and skillful presentation of their contentions.

II. Facts.

The history of the development of the controversy is as follows.

a. P&G’S Establishment of its Marks.

In 1964 P&G acquired the trademark “Sure” for a personal deodorant from a prior owner. At the time P&G considered using the mark on two different products which it had in development. One was an anti-perspirant underarm deodorant which eventually entered test market in 1972 bearing the name “Sure” and which has since established itself as one of the best selling anti-perspirants in the country. The other was a woman’s tampon which was to be P&G’s first entry into the woman’s sanitary protection field. Accordingly, P&G applied in 1964 for a federal trademark registration for “Sure” for tampons. As a deodorant mark, “Sure” was already registered by the predecessor.

P&G encountered clouds and potential obstacles to its use of the mark. Litigation with one adverse claimant was settled in 1968, following which the registration of “Sure” for tampons was granted by the patent office. In 1970, P&G succeeded in removing another potential cloud by buying from its owner the mark “Assure” which was registered for use on a mouthwash and a shampoo.

Also in 1970, P&G won a favorable resolution of a lawsuit brought by the manufacturer of a competing deodorant Arrid which sought to prevent P&G’s use of “Sure” on the deodorant by reason of trademark rights in Arrid’s advertising slogan “Use Arrid, to be sure”. Carter-Wallace, Inc. v. Procter & Gamble Co., 434 F.2d 794 (9 Cir. 1970).

The anti-perspirant was ready for test marketing far in advance of the tampon. It was given the name Sure Anti-perspirant Deodorant and entered test market in 1972; it went national in 1973. Since it was introduced, over 300 million units have been sold bringing revenues to P&G of approximately $300,000,000. P&G has spent approximately $100,000,000 on the promotion of the product.

In 1974, P&G’s tampon was ready to enter test market. The name Sure was not adopted. The name chosen was Rely. The marketing of Rely has expanded from year to year to the point that it is now sold in approximately two-thirds of the United States, including substantially all but the northeast.

Sure for tampons, since 1964, and Assure for mouthwash and shampoo, since 1970, have been carried by P&G in its “minor brands program”. The minor brands program is designed by P&G to establish and maintain ownership rights over trademarks which have not been assigned by P&G to any commercially marketed product. One of the most hotly contested issues in this lawsuit is the legal effectiveness of this program to maintain ownership rights in the Assure and Sure-for-tampon marks for ten and sixteen years respectively.

*1191 b. J&J’s Establishment of its Marks.

Assure! Natural Fit Tampon.

For many years J&J’s subsidiary PPC has been the country’s leading manufacturer of women’s external sanitary protection devices which have included the brand names Modess, Carefree and Stayfree. Although there was at one time a Modess tampon, it was not commercially successful; PPC has never successfully marketed a tampon. The tampon market has for many years been dominated by Tampax.

Since the early 1970’s PPC has had under development a tampon, the subject of this lawsuit, which claims important technological improvements over prior products. The product development project was named Apex. The tampon eventually acquired the name Assure! Natural Fit Tampon. The principal technological improvements claimed have to do with high absorbency fibres and radial expansion. (The Tampax tampon expands in length, rather than radius, as it absorbs fluid). The Assure tampon also carries a deodorancy feature consisting of a masking fragrance, which was added to the product in 1976. During the 1970’s other tampons have been introduced which involve the use of highly absorbent fibres and radial expansion; these include P&G’s Rely, and Playtex. PPC’s parent J&J markets a radially expanding tampon under the name “o.b.” PPC claims superiority to its competitors’ products on the grounds that while the competitors’ expand outward only at the upper end, Assure expends radially throughout its length assuring a better fit, better protection against leakage and greater comfort. Assure, Rely and Playtex are expected to compete with one another to seek to take away from Tampax a share of its market dominance.

During the mid-1970’s PPC searched extensively for an appropriate name for its product. Hundreds of names were considered and nearly twenty were tested for consumer reaction by market research specialists. PPC was interested in a name which would evoke confidence in the additional protection against leakage offered by the radial expansion technology. It was impressed with the name Rely which P&G had chosen for similar reasons.

The name Assure was first considered in 1974. A Miss Aikman, who was then in charge of the product’s development at PPC, requested the office of legal counsel to ascertain the availability of the name. In response Michael J. Ryan, trademark counsel of J&J, commissioned a search of the trademark register. The trademark search revealed the existence of P&G’s registration of the Sure mark for tampons as well as Sure for deodorant. On this basis Ryan furnished a standard-form provisional opinion stating that Assure “appears to be not available and registerable at this date.” This was one of hundreds of routine requests of this nature handled annually by Ryan’s office. It was one of many such requests emanating from the Apex project. Ryan’s opinion was provisional and qualified by the word “appears”. It was based solely on the face of the trademark register. Aikman apparently was aware of the existence of P&G’s minor brand Sure tampon, as a packet of Sure tampons was found in her credenza by her successor.

In 1974 Mary McGuire took over responsibility for the development of the Apex Project at PPC. Consumer testing of the product at that time convinced McGuire that it was not ready for market. PPC had no prior experience with the use of super-absorbent fibres. The product did not work satisfactorily. Accordingly she directed her attention for nearly two years to the improvement of the technology. The process was expensive, laborious and time-consuming. When the product had been substantially improved, it was tested for consumer preference against Playtex’s radially expending deodorant tampon. The testing indicated that consumers favored a product carrying a fragrance. Accordingly, a fragrance was added to PPC’s tampori. During McGuire’s first two years on the project, little attention was given to the problem of naming as her primary attention was focussed on product improvement.

In the second half of 1976 attention returned to the naming problem. A large *1192 number of names was under consideration and many were submitted to Ryan for a routine check of the trademark register. Among them once again was the name Assure, no one remembering that it had been checked in 1974. Ryan again commissioned a trademark search. He delivered a second tentative opinion again stating the conclusion that the name appeared to be unavailable based on P&G registrations for Sure tampons and Assure shampoo.

In the fall of 1976 PPC conducted extensive name testing among consumers. The name “Assurance Plus” tested extremely well. Furthermore, it carried connotations which McGuire and her superiors considered desirable for the product. McGuire did not like the name because it was too long. Attention returned to the name Assure.

P&G was not known to be marketing either a Sure tampon or any product under the Assure label. Accordingly, Ryan was instructed to investigate further the legal availability of the name to determine whether the P&G registrations represented marks which were actively used in commerce, or whether the marks might be available in spite of the registrations. Ryan conducted an investigation. First he instructed the PPC sales force to canvas retail stores throughout the country to determine whether a P&G Sure tampon or Assure shampoo was being marketed. No such products were found in existence. Ryan also commissioned an outside investigator to explore the question. This was a Mr. John Sersen on whom J&J’s legal department frequently relied for such investigations. Sersen reported back that P&G’s marketing personnel were unaware of the existence of such products. On the basis of the information available to him Ryan advised PPC’s executives that the P&G registrations were no legal obstacle to PPC since P&G had not used the marks in commerce. He also concluded that P&G’s use of Sure on an underarm anti-perspirant deodorant would not bar PPC’s use of Assure on a tampon because of differences in the name and in the product categories. Ryan furnished his opinion to PPC’s executives that the name Assure was legally available.

In January, 1977 PPC made initial token sales under an Assure label in order to qualify for registration. Subsequently, PPC filed an application to the Patent and Trademark Office of the U.S. Department of Commerce seeking to register the mark Assure for tampons. Not surprisingly, registration was refused on December 29, 1977 by reason of the P&G registration of Sure for tampons.

1977 and the early part of 1978 were devoted primarily to the development of an advertising strategy and copy. For a long time this endeavor did not fare well. PPC’s agency was SSC&B. The approach which the agency developed initially was called the three-in-one approach. It told the consumer of three significant benefits to be derived from the product — protection, comfort and deodorancy. An obstacle to the use of this strategy lay in the rules of the National Association of Broadcasters Code. The Code authorities prohibit any reference to the deodorant qualities of the tampon except insofar as such reference is part of the product’s name. Thus, in order to permit television advertising of the three benefits approach, the name was modified to Assure! Deodorant Tampons.

The three-in-one advertising strategy was too diffuse and was not successful in testing. PPC continued to search for an advertising strategy. In 1978 PPC sought a fresh start consulting two other agencies. One of them suggested a completely new product name — “Woman”. But the Woman strategy failed to convey the benefits of the product and did not do well in consumer testing.

Eventually McGuire and her SSC&B team decided to focus on the most significant and unique benefit of the product, the radial expansion throughout its length, which permits it to adapt its shape to the shape of the vagina. This was thought to provide greater comfort and protection. This feature was demonstrated by placing tampons in variously shaped water glasses; in each case the tampon assumed the shape of the container, in a manner that permit *1193 ted the container to be turned over without the water leaking out. From these discussions emerged the “It fits” strategy incorporating a three vial photographic display of the radial expansion. Print ads based on this concept tested extremely favorably. The development of television advertising faced another obstacle. The ever-vigilant NAB Code also forbids any reference to the fit of a tampon except as part of the product’s name. Accordingly, the word deodorant was dropped from the name and instead the name became Assure! Natural Fit tampons. The television copy prepared on this theme also tested very well. It was markedly superior to the suggestions and copy submitted by the other two advertising firms consulted. These were dropped. The “It fits” strategy was adopted. Final advertising was prepared and the product was finally named Assure! Natural Fit tampons.

The Assure tampon entered test market in Rochester in October, 1978 and in Portland in January, 1979. The test marketing was supported by the “It fits” print and television advertising. The print ads, which carry extensive copy, contain a mention of deodorancy, but it is given minimal importance in the overall impact of the ads. The television commercials, under the strictures of the NAB Code, contain no reference whatever to deodorancy, except that the package is visible on the screen with the word “deodorant” written on a corner of it. These advertising campaigns and the product sales have been successful. Second generation advertising has been developed to be used as follow-up in those markets. In the second generation advertising the deo-dorancy feature has been further diminished in importance.

Throughout the history of the Assure name selection and advertising strategy development there is no indication of any intention to trade on any association with P&G’s Sure anti-perspirant trademark.

Sure & Natural Maxishields.

In 1977, in Europe, the Unilever interests began marketing of a revolutionary new external menstrual protection device which, using super absorbent synthetic fibres, offered sufficient absorbency to contain the menstrual flow in a pad which was markedly thinner, less bulky and correspondingly more comfortable than any predecessor on the market. Several competitors including PPC then developed competing technology and were soon offering comparable products on the European markets. PPC believes it is in a race with others, including P&G, to develop such a product for entry in the United States market.

As mentioned above PPC has for many years been the leader in manufacture of external protection devices. Its current leading product for full menstrual flow was the Stayfree Maxi-pad. These are approximately three quarters of an inch thick. The box in which they are sold is large and bulky. PPC’s new product is only lA inch thick and is believed to be capable of absorbing full menstrual flow. Because the product is so thin, it is enormously more comfortable than the bulky pads which were previously required during heavy flow.

After extensive consumer testing, the word “maxishields” was chosen as a generic descriptive to be a part of the product’s name. This was a cross between the names of the absorbent maxi-pad and a thin “panty shield” which PPC sold under the name “Carefree” for protection against between-period spotting.

In early 1978 PPC began to search for a brand name which would communicate the product’s novel and important benefits. At first it employed the services of Brand Group, Inc., a computer name search organization, which submitted thousands of names for consideration. During 1978 extensive name-testing was performed among consumers. In the fall of 1978 the name Sure & Natural emerged as the clear winner of all testing. Ryan was consulted as to the availability of the name. Ryan advised based on considerations similar to those which governed his advice on the Assure name, that the name was legally available.

After P&G brought this action against the Assure name, the top executives and *1194 general counsel of J&J reconsidered the question whether to go ahead with the Sure & Natural name. They decided on advice of counsel that P&G’s claims posed no legal obstacle to PPC’s use of the Sure & Natural name and that if sued by P&G PPC would be likely to prevail. A decision was made to continue with the Sure & Natural name.

During 1979 PPC has spent close to $5,000,000 on the preparation of packaging and advertising for the sale of Sure & Natural Maxishields. Print ads have been prepared as well as advertisements for television. Once again suitable advertising was obtained only with great difficulty. It took over a year to develop satisfactory copy.

Packaging was an enormous undertaking. PPC worked with six different packaging houses and considered literally thousands of mock up packages.

Sure & Natural Maxishields do not contain any fragrance or deodorancy feature. PPC did not consider adding a deodorant while the product was under development; it believes that the presence of a deodorant would draw attention away from the unique features of this product. While it is possible that PPC may add a fragrance or deodorancy feature to the product at some time in the future, no such plans have been considered to date and no consumer testing has been done to determine the implications of such a change.

Test marketing began in Florida in December during this trial. When P&G learned during trial of the Sure & Natural Maxishield, the proceedings were interrupted for further discovery and P&G modified its complaint to include claims directed against this mark as well as Assure.

Because of the revolutionary nature of this product and the commercial importance of being first to launch such a product on the U.S. market, PPC is making every effort to begin full scale national distribution at the earliest possible date. It will not engage in drawn out test marketing procedures as it has in the case of the Assure tampon.

The parties have stipulated that it may be assumed for purposes of the action (although not necessarily based on fact) that P&G is in a race with PPC to be the first to market a similar thin super-absorbent pad and that a significant competitive advantage will accrue to the first to reach national distribution.

Nothing in the evidence suggests any intention on J&J’s part to imitate or trade in any way on the name or reputation of P&G’s Sure anti-perspirant deodorant.

PPC’s Cancellation Proceeding in the Patent Office.

In early 1978 Ryan communicated with John J. Cummins, his counterpart at P&G in the hopes of obtaining a waiver of any claim of infringement of P&G’s minor brands. The discussions were not successful. Recognizing that the Assure mark could not be registered in the patent office unless the obstacle of P&G’s Sure for tampons was removed, Ryan determined that it was necessary to institute a cancellation proceeding in the patent office in which he would demonstrate that P&G had abandoned the mark by reason of its non-use since registration in 1968. The proceeding was initiated before the Trademark Trial and Appeal Board in June of 1978. In due course P&G answered. A schedule was set for the submission of proofs which called for the filing of PPC’s submissions by March 5, 1979. In the meantime Ryan approached Cummins in a further attempt to settle amicably. They concluded that the matter would have to be resolved in the district court. In October, 1978 as stated above PPC began its test marketing of the Assure! Natural Fit tampon in Rochester. On November 22, 1978 P&G filed this action.

Upon P&G’s institution of this action, Ryan took no further steps to prosecute the proceeding before the Board believing that the entire controversy would be consolidated into this district court litigation. He knew that the clerk of the district court is required by law to notify the patent office of the filing of the complaint. Ryan testified that it was the conventional practice *1195 among patent attorneys in these common circumstances where the respondent in a cancellation proceeding has filed an infringement action in the district court, for that party to advise the Board that the patent office proceeding is suspended in view of the district court litigation.

Cummins did not so advise the patent office. Instead on March 8, 1979, three days after the time set by the Board for the submission of the plaintiff’s proofs, he moved for a default judgment by reason of PPC’s failure to prosecute the action. The motion was granted over PPC’s opposition. PPC made repeated efforts to vacate this default which in each instance were denied. Finally on December 6,1979 while this trial was in progress, the Commissioner of Patents issued a final opinion declining to review the Board’s action. The Commissioner however granted an extension of 60 days for PPC to file a civil action for review in the United States District Court or to file an appeal with the Court of Customs and Patent Appeal. PPC thereafter modified its pleadings in this action to seek review of the dismissal by the Board.

III. The Contentions

Plaintiff asserts that the Assure and the Sure & Natural marks infringe, compete unfairly with and dilute plaintiff’s marks and that defendants’ use of the marks would involve a false designation of origin.

Defendants contend insofar as plaintiff’s claims are made on behalf of its Sure deodorant mark, that there is (1) no substantial likelihood of consumer confusion as to a common source of the products at issue; (2) no likelihood that P&G will use the Sure mark on a menstrual protection product; and (3) no threat to P&G’s business reputation or to the strength of the Sure deodorant mark. Thus, defendants contend that no infringement, unfair competition, false designation of origin or unfair competition has been shown.

Insofar as plaintiff’s claims are made on behalf of the minor brands, defendants contend that P&G has not established the right to trademark protection because it has not used the marks in commerce. Defendants seek an order directing the cancellation of these registrations.

I find that the defendants have thoroughly and convincingly demonstrated the validity of their contentions.

(a) Infringement of the Sure Anti-perspi-rant Mark.

A long and consistent series of opinions in this Circuit has outlined the task of the district judge, in determining when and to what extent a trademark owner can block another’s use of the same or a similar mark on products different from his own. The universal reference point is Judge Friendly’s opinion in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2nd Cir. 1961) in which he set forth eight relevant factors to be considered, these being: “the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant’s good faith in adopting its own mark, the quality of defendant’s product, and the sophistication of the buyers.” In Chandon Champagne Corp. v. San Marino Wine Corp., 335 F.2d 531, 536 (2d Cir. 1964) Judge Friendly noted another factor, the relative harm which the parties would experience as a result of grant or denial of the injunction.

These factors are designed to guide the court in guarding the three interests which justify trademark protection covering nonidentical products: “[F]irst, the senior user’s interest in being able to enter a related field at some future time; second, his interest in protecting the good reputation associated with his mark from the possibility of being tarnished by inferior merchandise of the junior user; and third, the public’s interest in not being misled by confusingly similar marks . . . ” Scarves by Vera v. Todo Imports, 544 F.2d 1167, 1172 (2d Cir. 1976). The consideration which the courts have repeatedly emphasized is— “[W]hether there is any likelihood that an appreciable number of ordinarily prudent *1196 purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question,” McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2d Cir. 1979); Mushroom Makers, Inc. v. R. G. Barry Corp., 580 F.2d 44, 47 (2 Cir. 1978). The factors also give appropriate regard to equity and fair play.

I have given consideration to and hereinafter discuss each of these factors. I find that no interest protected by trademark laws would be served by allowing P&G’s ownership of the Sure mark on its anti-per-spirant to justify enjoining defendant’s use of its marks.

A. The Strength of P&G’s Sure Mark.

The strength of a trademark depends upon “the distinctiveness of the mark, or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous, source.” McGregor-Doniger, supra 599 F.2d at 1131. Trademarks are divided into four categories forming the spectrum of trademark strength, ranging from those trademarks so inherently weak as to receive no legal protection to those so strong as to command broad protection. E. g., McGregor-Doniger, supra; Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2 Cir. 1976).

At the weakest end of the spectrum are the generic marks, which cannot be registered and receive no protection. At the strongest end are the arbitrary or fanciful marks. In between, are descriptive marks, on the weaker side, and suggestive marks on the stronger side.

Descriptive terms are those which “forthwith convey[] an immediate idea of the ingredients, qualities or characteristics of the goods.” Abercrombie & Fitch, supra, 537 F.2d at 11. They are entitled to registration as trademarks only upon proof that they have acquired “secondary meaning”, or in other words, have become associated in the public mind with the product or its source. Suggestive terms are those which “require[] imagination, thought and perception to reach a conclusion as to the nature of goods.” Id. at 11. They can be registered without proof of secondary meaning.

When a registration was sought for Sure, the Patent and Trademark Office registered the mark without requiring proof of secondary meaning, apparently finding that it was suggestive rather than descriptive. The approval of the patent office established a rebuttable presumption that the mark is suggestive. See Abercrombie & Fitch, supra, 537 F.2d at 11. I do not disturb the patent office finding.

However, I find that the Sure deodorant mark is intrinsically very weak, falling in the weakest end of the suggestive range. It is not very distinctive; its identifying or “origin-indicating” capacities are very low. McGregor-Doniger, supra.

As a name for an anti-perspirant deodorant Sure lacks originality and uniqueness. P&G has used one of the most common adjectives in the English language accurately spelled to boot, to convey, through that word’s primary meaning, a quality of the product or of a promised consumer reaction to its use. 3 The mark promises that users can be “sure” that their product will perform satisfactorily. They can be “sure” in the sense of the confidence that it will give them of protection from embarrassment.

In some respects, the Sure mark shares the features of laudatory marks like “best”, “outstanding” or “supreme”, which are entitled to little or no protection. E. g., Supreme Wine Company v. American Distilling Company, 310 F.2d 888 (2d Cir. 1962); Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, 378 F.Supp. 403 (S.D.N. Y.1974).

The extent to which sure is used in advertising deodorant and other products is fur *1197 ther evidence of the inherent weakness of the mark. 4 P&G itself uses the word sure throughout its advertising. Indeed, in order to establish its right to the Sure trademark, P&G had to defeat Carter Wallace’s claim that its slogan “Use Arrid to be sure” entitled Carter Wallace to exclusive rights. Underlying the Ninth Circuit’s decision in P&G’s favor was its finding that sure is a common word frequently utilized in advertising by manufacturers of deodorants and kindred products. Carter-Wallace, 434 F.2d at at 801-2. That decision should certainly have put P&G on notice that Sure as applied to a deodorant product would be an unoriginal, non-distinctive and weak mark.

Of course the inquiry into strength does not end with a characterization of a mark’s inherent distinctiveness. Marks not originally strong can acquire strength by developing secondary meaning. In other words, the law recognizes that marks which are not inherently distinctive can become distinctive through use, as the public comes to associate the mark with the product or source.

P&G has presented evidence of very large sales and advertising expenditures connected with Sure deodorant. It has sold some 300 million units in the last seven years and spent $100 million in the promotion of the name. I do not question that Sure has acquired some significant secondary meaning and strength. Nonetheless, the more common the word and the more commonplace the manner of its usage in a trademark, the more difficult it is to displace the word’s conventional significance so that it will be associated primarily in the public eye with the product. I have given P&G full recognition and credit for having established a secondary meaning and popular association through its marketing and promotion of Sure Anti-perspirant Deodorant. I nonetheless find that its strength is at best moderate.

The Degree of Similarity Between the Marks. B.

Similarity, for these purposes, is a functional test which must take in “all the factors that could reasonably be expected to be perceived by and remembered by potential purchasers” to determine whether it “is likely to provoke confusion.” McGregor-Doniger, 599 F.2d at 1133, 3 Callmann, The Law of Unfair Competition Trademarks and Monopolies, § 82.1(a) at 601-02 (3rd ed. 1969). The court must consider both the similarity of the names and the manner of their presentation to the public to determine whether confusion is likely to result.

While there is unquestionably a similarity between the words in question, a complete analysis shows that no confusion is likely.

First of all the character of the marks must be considered. When arbitrary or fanciful marks are involved, the distinctiveness of the marks will make the public more conscious of similarities than differences. As the district court noted in E.I. Dupont de Nemours and Co. v. Yoshida Int'l Inc., 393 F.Supp. 502 (E.D.N.Y.1975), where close similarity was found to exist between Teflon and Eflon marks, “use of similar coined words renders confusion more likely.” 393 F.Supp. at 511. In contrast when common words are involved as they are here, the degree of difference rather than the degree of similarity is likely to be more noticeable. In this light it is notable that the word assure is a verb, whereas sure is most commonly an adjective. As such it is necessarily used in a different fashion and produces different associations. It is also worth noting that the Assure! mark includes an exclamation point and double the number of syllables.

In like manner “Sure & Natural” is a combination of three words — two equally weighed adjectives separated by an ampersand. It is significantly and noticeably different from sure. This is not a case where *1198 a “plus” or “II” or “new” has been added to a distinctive mark in a manner which the consumer might expect to represent a line extension. Sure is a common word and is not the dominant or distinctive element of “Sure & Natural”. It is simply one of two common adjectives equally balanced and presented in combination.

In short, without denying the existence of a significant root similarity, the differences are marked, and prominent. Further whatever similarities exist between the marks is thoroughly undermined by the difference in visual presentation.

Neither the packaging nor the presentation of the brand names look at all alike. The basic color of the Sure Anti-perspirant container is white; the word “Sure” is written in upright uniform caps going diagonally across the upper part of the container, the name bordered above and below by bold diagonal colored stripes. The color contrasts are strong. There are no pictures or distractive images on the packaging.

Assure is packed quite differently, in large rectangular boxes. The coloring is a uniform pastel of green, yellow or orange, with a delicate butterfly in darker shades of the same color on the panel. The word Assure is written in a slightly inclined italic, a large capital A followed by smaller lower case letters and a slanted exclamation point at the end. The package contains design suggestions of delicacy and femininity which are totally absent from Sure’s presentation.

The Sure & Natural package has a pale orange and yellow background with daisies on the lower corner. The brand name is written with initial caps and smaller lower case letters horizontally across the top of the package. Again, its impact and appearance have little in common with Sure’s packaging or presentation.

PPC devoted great care and expense to the package design. Hundreds of designs were considered and many were tested for consumer preference. Considering overall impact, the defendant’s packaging is in no way suggestive or reminiscent of plaintiff’s.

In conclusion I find that the similarities between plaintiff’s and defendant’s marks are not confusing, that the dissimilarities are prominent and noticeable, and upon total consideration of the similarities and dissimilarities I find little likelihood that the defendant’s products will be associated in the consumers’ minds with the plaintiff or its product.

C. Proximity of the Products.

The proximity of the products factor does not favor the defendants as strongly as the other factors to be considered. Both are personal body care products aimed primarily at avoiding embarrassing stains on garments; Assure and Sure share a deodorancy feature. They sell for approximately similar prices. They are sold in the same types of outlets and they are advertised in generally similar fashion in magazines and on television. A consumer might expect a single manufacturer to make both products; indeed P&G does. 5

On the other hand, there is competitive distance between the products. Women’s menstrual protection products (or “catamenials” as they are sometimes called in the industry) are generally regarded as a separate class of consumer products. While the two types of products are sold in the same outlets, they are not sold side by side or on the same shelf. In drug stores, supermarkets and discount houses, deodorants have one shelving section and women’s menstrual protection products another. See 3 Callmann § 82.2(c)(2); King Research, Inc. v. Shulton, Inc., 324 F.Supp. 631, 638 (D.C. N.Y.) aff’d, 454 F.2d 66 (2 Cir. 1972). Further, the deodorancy feature of the products is significantly different: The Sure deodorant operates primarily through antiperspirant and a chemical killing of odor-. causing bacteria; the deodorant contained in the tampon is a masking fragrance. In *1199 neither ease is the deodorancy feature emphasized in marketing. Sure is positioned on the market primarily as an anti-perspi-rant. Its advertising promises dryness and confidence derived from the anti-perspirant qualities of the product; deodorancy is an unstressed secondary feature. As explained above, Assure does not highlight the deodorancy feature in its advertising. Its strategy is directed towards the comfort, fit and the consequent reliability of the product. In television advertising the deodoran-cy is not mentioned at all (except to the extent that the word “deodorant” can be perceived on the package). Print advertising does include claims of deodorancy, but these are secondary to the other claims.

I conclude that the products are sufficiently close that a reasonable possibility of public confusion could exist if other factors were present to support it. However, having found no such factors leading to confusion or mistaken association, the proximity of the products is of little significance.

D. The Likelihood that P&G will Bridge the Gap.

The likelihood of P&G’s bridging the gap by marketing a tampon or other catamenial product under the name Sure was one of the most hotly contested issues in this litigation. Since at least 1968 (and possibly as early as 1964), P&G has engaged in a token distribution of tampons under the Sure mark in accordance with the procedures of its Minor Brands program. Several of P&G’s executives testified that they continued to regard Sure as a likely name for a future tampon product. They said it had not been given to P&G’s first tampon because in 1974 when the tampon was named, the Sure deodorant name was not yet sufficiently established on the market; it would have been too risky to launch two major products with an unestablished name. Now that Sure anti-perspirant has established itself as a major brand, they argue that the same name can be used on the tampon without unreasonable risk. Indeed, they testified it was a likely candidate.

On consideration of all of the evidence, I find it extremely unlikely that P&G will bridge the gap by using the Sure name on a tampon product. To do so would be markedly inconsistent with P&G’s traditional approach to the naming of products and to the administration of brands. Furthermore, the testimony of P&G’s own executives reveal that so naming a tampon would involve risks to the marketing of Sure antiperspirant which P&G could not easily justify taking.

P&G testified that its business was operated under the theory of brand management. Each of P&G’s brands stands as an independent self-sustaining competitive unit; some even compete with one another. The Procter & Gamble origin is minimized. On each of its products the brand name is prominently displayed while the name of Procter & Gamble is generally shown only on an obscure part of the package in very small type in such a manner that it will not be noticed without a careful examination. The Procter & Gamble name is not used in advertising except on occasion to give new products a boost upon their introduction. The policy is that each brand must have the strength to stand independently and firmly on its own. To the extent that any brand becomes the victim of adverse publicity, the damage will be limited to that brand and will not spill over to the company’s other brands. These business policies are inconsistent with extending the Sure name from the anti-perspirant to a tampon.

The tampon would.be manufactured, promoted and sold in a separate division from that which manufactures and controls the publicity for the deodorant: the deodorant is sold by the toilet goods division: the tampon would come from the paper goods division. The advertising and brand promotion personnel of these two divisions operate separately and independently from each other. They do not work together, meet or interact except to the extent that they are under common supervision at the highest levels of the company. Thus the internal structure of P&G is not easily compatible with a rationalized, harmonious brand management covering both a deodorant and a tampon.

*1200 The defendants point to testimony of Howard Margens, former chairman of the P&G executive committee, in another trial in 1975 to the effect that “with rare exception we don’t use . . . the name of one brand on a second product.” Although P&G witnesses claimed that there was no such company policy, they were not able to point to a single convicting example of departure from the practice in the company’s history. It is true the Ivory name had been used on a soap, a detergent and a shampoo. While there may be significant chemical differences between these products, they are very closely associated in the minds of the consumer. Another example offered was the marketing of a liquid shampoo and a concentrate shampoo both under the name Prell. Again, these two products are so closely related as to appear to be one. Other instances were infrequent and unconvincing.

Finally, P&G’s executives testified to serious harm which could be caused to its deodorant market by use of the Sure name on feminine sanitary protection products. Indeed, this is the basis of a large part of P&G’s claim concerning the potential harm threatened by the defendant’s use of a name similar to Sure on a tampon. P&G has made a point in positioning its Sure anti-perspirant to appeal to the entire family, male a