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

Procter & Gamble Company (P&G) (plaintiff) owned the trademark “Sure” for an underarm antiperspirant and a tampon. P&G also owned the trademark “Assure” for a mouthwash and a shampoo. Since 1964, P&G had carried the “Sure” mark for tampons in its minor-brands program. From 1964 through 1968, P&G was involved in litigation over the use of the “Sure” mark for tampons, and the mark was ultimately registered to P&G in 1968. P&G had maintained the “Assure” mark for mouthwash and shampoo in the minor-brands program since 1970. P&G used the minor-brands program to establish and maintain ownership rights over trademarks that P&G had not assigned to commercially marketed products. In an effort to avoid claims that the marks had been abandoned, P&G shipped small quantities of minor-brands-program products under their branded labels. P&G’s total revenues from sales of “Sure” tampons were $874.70, and the “Assure” mark brought in revenues of $491.30 for shampoo and $161.50 for mouthwash. During the relevant time, P&G introduced new tampon, shampoo, and mouthwash products but not under the “Sure” or “Assure” marks. P&G sued Johnson & Johnson, Inc. (J&J) (defendant) for trademark infringement based on J&J’s use of the marks “Assure!” on a tampon and “Sure & Natural” on an external, menstrual-protection shield. Insofar as P&G’s claims related to the minor-brands program, J&J argued that P&G had not established the right to trademark protection because P&G had not used the marks in commerce. The court held a bench trial.