Victoria's Family Takes Pre-emptive Shot At Airborne Trade Dress Litigation
This article was originally published in The Rose Sheet
Executive Summary
Pine Brothers, founded by the creator of the Airborne immune supplement brand now owned by Reckitt, files a complaint in California federal court asking for an order to find packaging for its Victoria’s Family Formula does not infringe trade dress of Airborne, as Reckitt alleges in a cease and desist letter.
Pine Brothers LLC is asking a federal court to order that packaging for its Victoria’s Family Formula immune supplement does not infringe the trade dress of a similar product that Pine Brother's founder also developed and now is owned by Reckitt Benckiser Group PLC, Airborne.
In a complaint filed March 29, Carmel, Calif.-based Pine Brothers asks for a declaratory judgement of non-infringement of unregistered trade dress under the Lanham Act and under California law against Reckitt's Parsippany, N.J.-based subsidiary, Reckitt-Benckiser LLC.
Pine Brothers CEO Victoria Knight-McDowell, who developed the Victoria’s formula and launched it two years ago, also asks the US District Court of the Northern District of California to award costs of the legal action against Reckitt and other relief it may be entitled to.
The complaint states Pine Brothers, which Knight-McDowell owns with her husband, Rider McDowell, is making the request in response to Reckitt’s March 16 letter stating that it would pursue litigation against Pine Brothers unless the company by March 30 agreed to immediately cease and desist sales of its product, pay profits on the product to Reckitt and reimburse its legal costs.
According to the complaint, Reckitt contends that Pine Brothers engaged in unfair competition under the Lanham Act and state laws and that, led by b Knight-McDowell it “copied” Reckitt’s trade dress to create a “strikingly similar” package that creates a “nearly identical commercial impression on the shelf.”
Reckitt argued it has protectable rights in its trade dress for Airborne consisting of “the back panel, black bar, white lettering and overall color combinations of each pack and the line as whole, along with a stylized cartoonish illustration of a person,” Pine Brothers' complaint states.
Pine Brothers included in its complaint images of product packaging for both brands. Airborne’s packaging is a pastel pink and yellow background with a cartoon man holding up a cup depicting the formula inside, while Victoria’s Family Formula features similar colors in the background but a cartoon woman standing in front of a blackboard and three women holding various herbs.
Knight-McDowell developed Airborne in 1997 and sold the brand to GF Capital investors in 2009. Schiff Nutrition International Inc. acquired it for $150m in 2012, the same year that Reckitt acquired Schiff Nutrition, adding Airborne and other consumer health brands to its portfolio. (Also see "Reckitt’s Schiff Buy Reflects Nutritional Industry “On Fire”" - Pink Sheet, 3 Dec, 2012.) Victoria's Family Formula and Airborne both contain zinc and vitamin C and each is formulated with a proprietary herbal blend.
Stylized Cartoon Figures Not Unique To RB
Pine Brothers argues Knight-McDowell developed Victoria’s Family Formula as a new formula on her own in 20 years of experimentation and the product is distinct from Airborne and other immune supplements because the firm develops primary herbal extracts for the products from whole plant material in the US and does not import powdered herbal blends.
After testing the product with family and friends, Knight-McDowell commercialized it with a Pine Brothers launch in March 2016 making it available in retail outlets and online. Modeling the Paul Newman line of products, Pine Brothers donates 100% of after-tax profits to charity.
Airborne is sold in more than 200 countries and had $16bn reported revenues in 2017, according to the complaint.
Pine Brothers "did not create its Victoria’s Family Formula packaging with the intention of deliberately appropriating Reckitt’s goodwill, if any, in the Airborne trade dress,” the firm states in its complaint. “The woman on the hang tag is Ms. McDowell. She is standing in front of a classroom blackboard because she is a former school teacher,” the firm says.
“The use of stylized people or cartoon characters on packaging is not unique to Airborne. Many immune support dietary supplements contain cartoon figures on their packaging,” Pine Brothers says. The complaint includes images of packaging featuring cartoon characters for immune supplements, all with formulations similar to Airborne, available under Bayer AG’s Flintstones brand, Walgreen's Wal-borne and other stores brands Air Defender, Air Immune Blast, Airmune and Airshield.
Pine Brothers also says competitor immune support supplements are sold in similar rectangular package boxes with a hang tag and feature different background colors and that Reckitt gave no indication that it would question Victoria's Family packaging in the two years the product's been available.
Complying with the request Reckitt stated in its cease and desist letter would “cause substantial, immediate and significant injury to Pine Bros., including the payment of money to Reckitt that would otherwise have gone to charity,” the complaint states. “This would irreparably harm the purpose of the business, which is to donate its new profits to charity. Reckitt would rather take those net profits for itself than have them donated to charity,” the firm says.
From the editors of the Tan Sheet.