At issue are two trademark registrations, and one pending application, owned by GSK, for marks it uses in connection with its Aquafresh brand. The first registration is for a standard character / word mark for the phrase "Triple Protection." The second involves a design mark for its "nurdle". Colgate defines a nurdle as "a small amount of toothpaste akin to what consumers would use when brushing their teeth." GSK's nurdle registration describes its mark as "a curved band in the color red on top of a curved band in the color white on top of a curved band in the color blue." GSK's design mark for the nurdle is pictured below:
Image of GSK's nurdle mark as depicted in U.S. Trademark Registration No. 3,693,035.
There appears to be little concern that consumers might be confused by the design's similarity to the eyebrow of the Wise potato chips owl or the top of the T in The New York Times' logo, or for that matter, the French flag. Whether some might use those items for their dental hygiene, it remains unlikely that any of them would be confused, at least with respect to the source of their toothpaste.
But Colgate is another story. It wants to use its own three-colored nurdle and the phrase "Triple Action" to describe its own toothpaste. Thus, Colgate filed suit against GSK seeking to invalidate GSK's trademark registrations and requesting a judicial declaration that, in any event, Colgate is not infringing GSK's marks or diluting them.
In May, 2010, GSK also filed a new trademark application that covers the nurdle design but is not restricted to any particular colors. Colgate's complaint described this new application as "a blatant shot across Colgate's bow, as GSK did not file this application until after GSK had already complained about Colgate's nurdle design...." Colgate claims it is "deeply concerned that GSK desires to stifle competition in the marketplace."
Colgate's complaint alleges that there is no likelihood that consumers will be confused with the parties' products. It also asserts that it has the right to use the marks to describe Colgate's products. Under U.S. trademark law, trademark protection is not available for generic marks or marks that are "merely descriptive" of the goods or services for which they are used. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.
Colgate alleges that it uses the phrase "Triple Action" to "easily and immediately describe to consumers that Colgate's toothpaste offers three important benefits, namely, 'Cavity protection,' 'Whiter teeth,' and 'Fresh breath' " and that the stripes on its nurdle are red, white and green, which correspond to the stripes in the toothpaste itself. It also explains that the phrase "Triple Action" is plainly used as a shorthand description for the three benefits and that those benefits are listed right next to the phrase, and numbered 1 through 3, on the packaging.
The dispute remains to be resolved, although the keen attention it has focused on a previously little used term and has led at least one observer to describe the case as "the nurdle heard 'round the world." Another anonymous source has posted this gem:
On a far away toothbrushColgate filed its lawsuit on July 29. Hours later, GSK is also reported to have filed its own lawsuit. Colgate's complaint was filed as Colgate-Palmolive Company v. Glaxosmithkline LLC, U.S. District Court, Southern District of New York Case No. 1:10-cv-05728-RJS. As of this writing, the GSK lawsuit is not available on the court's electronic filing system.
in Salamasond
GlaxoSmithKline's nurdle
was king of the pond.
It offered triple protection.
It was clean, it was neat.
Glaxo's wallet was fat.
There was plenty to eat.
Until one day,
Colgate moved into the hood
and declared
its Tri-action nurdle
was equally good.
The lawyers lined up
with each tick of the clock.
Their breifcases stretched
two hundred miles and five blocks.
The toothpaste shelves emptied,
and cavities flourished.
Soon only the
lawyers and dentists
were nurished....
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