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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What do you think?

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?

 —David Mitchel, Vice President of Norton Mitchel Marketing

Successful brands often find holes in markets that need to be filled. There are numerous examples to illustrate this point. Microsoft found a great niche in the computer software market and their success made Bill Gates one of the richest individuals on the planet. Apple’s iPod was a product innovation that really enhanced the company’s bottom line. In the 1980’s, Porsche expanded their line of sports cars into a new niche with the 944 and it helped save the company from bankruptcy. However, sometimes holes exist for a reason and they can’t be filled despite the best branding efforts.

The latest example to illustrate this is Devotion Vodka. Devotion Vodka is a protein based vodka. The protein used in Devotion is casein, the same type of protein found in dairy products. According to its website, Devotion is "the world’s first and only 80 proof, triple-distilled casein infused vodka made in the USA". Recently, Devotion announced that they signed Mike "The Situation" Sorrentino of "Jersey Shore" fame to be their spokesperson. Additionally, The Situation will have an equity stake in the company. I believe The Situation is a reasonably qualified spokesperson for this brand. The Situation likes to drink and party as evidenced by his actions on "Jersey Shore" and he is also a fitness enthusiast.

Despite the alignment between The Situation and Devotion Vodka, it is unlikely that this will be a successful brand. This is because the product concept is flawed. The vodka is aimed at a fitness oriented individual. However, vodka is not perceived as a fitness oriented beverage. Additionally, I believe that people will have a hard time understanding how casein protein fits into a hard alcohol product. If the product concept flaw wasn’t a convincing enough argument, consider Devotion’s pricing strategy. Devotion will enter the market similarly priced to Grey Goose. Grey Goose is a vodka brand that is well perceived and associated with quality. It also holds cachet with those who live a Jersey Shore style lifestyle, a target market for the Devotion brand. In a consumer purchase decision between Devotion and Grey Goose, the vast majority of consumers should choose Grey Goose because of its brand equity and stronger price-value proposition.

Continue Reading When Holes in Markets Can’t Be Filled