Right to change TMed product's formula defeats proposed sunscreen injunction

Schering-Plough Healthcare Products, Inc. v. Neutrogena Corp., 2011 WL 2312569 (D. Del.)

As part of this case, the parties litigated over Neutrogena’s claim that its Ultra Sheer Dry-Touch Sunblock SPF 100+ contained Helioplex, a proprietary photostabilizing agent.

Neutrogena publicly defined Helioplex as a proprietary blend of specific compounds: avobenzone, diethylhexyl 2,6- naphthalate ("DEHN") and oxybenzone; the contested ads prominently stated that 100+ contained Helioplex; from April through August 2009, and in product shipped through April 2010, 100+ in fact used octocrylene instead of DEHN. These ads were literally false, but not preliminarily enjoined.

After eBay, the court declined to apply a presumption of irreparable harm. Some of the ads at issue were directly comparative with Coppertone, though the falsity wasn’t in the comparison itself. Coppertone’s witness testified that the false advertising harmed the comparative consumer perception of the Coppertone brand, but didn’t describe lost sales or customers with any particularity. Coppertone didn’t conduct any investigation of the impact of the ads on its reputation or consumer base. It also didn’t quantify how much DEHN-free 100+ remained on the shelves.

The court didn’t make a specific factual finding, but the court “suspect[ed]” that “sunblock manufactured in late 2009 and early 2010 would have an expiration date that has either expired or that is fast approaching expiration at this point.” The Mayo Clinic says sunscreen lasts three years, so I’m not so sure about this.

Coppertone sought a broad injunction on the future use of the Helioplex mark in DEHN-free products, which would prohibit Neutrogena from redefining the Helioplex mark. Neutrogena’s website says:

Avobenzone is one of the best UVA blockers approved by the FDA, but it is highly unstable when exposed to sunlight. Neutrogena was the first in the U.S. market to introduce sun protection in which avobenzone was stabilized using oxybenzone and DEHN, effectively providing better, longer protection from harmful UVA rays. This breakthrough technology was called helioplex®. With time, and as science has progressed, the helioplex® name has come to encompass additional technologies and ingredients beyond DEHN but which still provide the same benefits of stabilized sun protection.
Today helioplex® represents a breadth of stabilized sunscreen technologies that deliver superior protection from the sun. When you choose a sunblock with the name helioplex®, you can be certain that you are using one that was specifically engineered to deliver superior UV protection that is broad spectrum and photostable.

Generally, a trademark holder is permitted latitude with respect to formula changes of products bearing the mark.

On balance, the proposed injunctive relief was not warranted. Neutrogena hadn’t shown any particular injuries as a result of the false ads. “Even were the court to assume a generalized injury to plaintiff's goodwill during the period of literal falsity, plaintiff adduces only conclusory allegations that money damages are incalculable and, therefore, inadequate to compensate any injuries it may have. Plaintiff has not attempted to quantify its loss.” (I don’t disagree; I’d just like to see this kind of reasoning applied in, say, a standard TM case.) On the other side, Neutrogena had a strong interest in using its Helioplex mark to the extent permissible by law. There was no indication that the public was currently being deceived; the relevant print ad was discontinued and it wasn’t clear that DEHN-free 100+ was still on sale.

Also, the proposed injunction was too broad. Even with the literal falsity here, Neutrogena wasn’t precluded from developing its Helioplex mark in connection with other photostabilizing technologies, and the court declined to “impede” Neutrogena’s TM rights.