Norris McLaughlin, P.A. Wins Precedential Third Circuit Dismissal of Trademark Case

Somerville, NJ (October 21, 2008) – In an important and precedential ruling of the Third Circuit, Robert Mahoney and Jeanne Hamburg, Members of the Somerville law firm of Norris McLaughlin, P.A. Intellectual Property Group, achieved dismissal of a trademark infringement case brought by large skin care product manufacturer E.T. Browne Drug Co., Inc. against its competitor and the firm’s client, Cococare Products, Inc. Mahoney argued the case, while Hamburg wrote the briefs.

The Third Circuit affirmed a grant of summary judgment in favor of Cococare., dismissing the complaint filed by E.T. Browne, on the grounds that E.T. Browne’s purported trademark “cocoa butter formula” for skin care products formulated with cocoa butter lacked secondary meaning. The Court found that the term “cocoa butter formula” failed to function as a trademark but, instead, functioned as a descriptive designation, which others (including Cococare) were free to use.

The Third Circuit reached this decision although E.T. Browne had spent “substantial amounts of money”over three decades in promoting its cocoa butter skin care products, which are the market leader in the U.S. of products of their type. In so holding, the Court relied heavily on Cococare’s argument that the term “Palmer’s” always preceded “Cocoa Butter Formula” and that, therefore, E.T. Browne had not met its burden to demonstrate that “Cocoa Butter Formula” by itself (rather than in combination with the term “Palmer’s”) had acquired significance as a brand. The Court specifically cited E.T. Browne’s failure to conduct a consumer survey on secondary meaning as an important factor in awarding summary judgment to Cococare. The decision has been designated for publication and is precedential.

This is the second federal court victory for the firm client achieved by Norris attorneys. The District Court had previously found in favor of Cococare on the grounds that “Cocoa Butter Formula” was generic, that is, incapable of ever functioning as a brand. While the Third Circuit found fact issues precluded summary judgment on the grounds the mark was generic, its dismissal was based on Cococare’s arguments in the alternative that the designation “Cocoa Butter Formula” lacked secondary meaning.

In a related administrative proceeding in the U.S. Trademark Office’s Trademark Trial and Appeal Board, Norris attorney Hamburg has moved for summary judgment in favor of Cococare in an opposition filed by Hamburg against a U.S. Trademark application for “cocoa butter formula” on the Principal Register. The opposition proceeding has been suspended by the Trademark Trial and Appeal Board until the motion is decided.

The Intellectual Property Group at Norris McLaughlin, P.A. is dedicated to providing sophisticated intellectual property counsel to domestic and international clients having a technology base or a need for trademark and copyright counsel. Several members of the Group have a background in a broad range of engineering and sciences, including chemical, biochemical, biotechnology, electrical, mechanical and computer software and hardware. Nine members of the Group are registered to practice before the United States Patent and Trademark Office. The services the IP Group provides include preparation and prosecution of patent, trademark and copyright applications, including domestic and international transactions. They are experienced in litigation, arbitration and dispute resolution. The Group also counsels clients on infringement, validity and related opinions; enforcement and exploitation of proprietary rights; trade secret protection; research, planning and technology protection, and new product introduction.

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