dial v. procter & gamble - purclean trademark complaint.pdf
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William G. Klain (AZ Bar No. 015851) George H. King (AZ Bar No. 013287) Lang & Klain, P.C. 8767 E. Via de Commercio, Suite 102 Scottsdale, AZ 85258 [email protected] [email protected] [email protected] Telephone: 480-947-1911 Kelly IP, LLP David M. Kelly (DC Bar No. 642080; pro hac vice application pending) Robert D. Litowitz (DC Bar No. 358658; pro hac vice application to be filed) Anjie Vichayanonda (VA Bar No. 85471; pro hac vice application pending) 1919 M Street, NW, Suite 610 Washington, D.C. 20036 Telephone: (202) 808-3570 Attorneys for the Plaintiff, The Dial Corporation
IN THE UNITED STATES DISTRICT COURT DISTRICT OF ARIZONA
The Dial Corporation, a Delaware corporation,
Plaintiff,
v. The Procter & Gamble Company, an Ohio corporation,
Defendant.
Civil Action No. _____________ VERIFIED COMPLAINT FOR: TRADEMARK INFRINGEMENT, FALSE DESIGNATION OF ORIGIN, DILUTION, AND UNFAIR COMPETITION JURY TRIAL DEMANDED
Plaintiff The Dial Corporation (“Dial”) brings this action against Defendant The
Procter & Gamble Company (“P&G”). Dial alleges as follows, upon actual knowledge
with respect to itself and its own acts, and upon information and belief as to all other
matters:
NATURE OF THE ACTION
This is an action for trademark infringement under 15 U.S.C. § 1114(1), 1.
trademark infringement and false designation of origin under 15 U.S.C. § 1125(a),
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trademark dilution under 15 U.S.C. § 1125(c), trademark dilution under A.R.S. § 44-
1448.01, and common-law trademark infringement and unfair competition.
For over 90 years, Dial’s PUREX brand of laundry products has earned its 2.
place on supermarket and household shelves. Competing against larger brands such as
P&G’s TIDE, Dial’s PUREX has commanded a significant share of the laundry detergent
market. Dial has emphasized the “PUR” component of its famous PUREX mark through
its use of the companion trademarks PURECLEAN, PURECLEAN TECHNOLOGY,
and PURECLEAN. PUREVALUE. PUREX. (the “PURECLEAN Marks”).
Now, however, P&G’s TIDE—the market leader by a wide margin—is 3.
poised to dilute the distinctiveness of the decades-old PUREX brand and swamp Dial’s
PURECLEAN Marks—and to confuse consumers—with a new “eco-friendly” version of
TIDE named “PURCLEAN.” Already, P&G has widely publicized the impending launch
of its new “PURCLEAN” product.
The result would be nothing short of disastrous for the PUREX brand that 4.
Dial and its predecessors have nurtured for decades. Many shoppers, unfamiliar with the
corporations behind the many brands of laundry products, will assume that Tide or P&G
owns or has swallowed-up PUREX. Even worse, shoppers may think that Dial is
infringing P&G’s PURCLEAN brand.
P&G was well aware of the famous PUREX mark and the companion 5.
“PUR” marks of its longstanding rival Dial when it selected the PURCLEAN mark. And
P&G is on notice that its new PURCLEAN brand will likely create consumer confusion.
Indeed, the U.S. Patent and Trademark Office has rejected P&G’s PURCLEAN
trademark because it conflicts with Dial’s prior rights and is likely to confuse consumers.
Yet P&G has ignored Dial’s trademark rights and the public’s right to be free from
confusion.
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Dial therefore brings this Complaint to protect its valuable trademarks and 6.
to protect the public from the confusion that will likely exist if P&G goes forward with its
PURCLEAN campaign and launches the PURCLEAN product.
THE PARTIES
Dial is a Delaware corporation with its principal place of business located 7.
at 7201 E. Henkel Way, Scottsdale, Arizona 85255.
P&G is an Ohio corporation with its principal place of business located at 8.
One Procter & Gamble Plaza, Cincinnati, Ohio 45202.
JURISDICTION AND VENUE
This Court has jurisdiction over the subject matter of this action pursuant to 9.
15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338(a) and (b). This Court has supplemental
jurisdiction over Dial’s state law claims pursuant to 28 U.S.C. § 1367 because those
claims are so related to their federal claims that they form part of the same case or
controversy and derive from a common nucleus of operative facts.
This Court has personal jurisdiction over P&G and venue is proper in the 10.
District of Arizona pursuant to 28 U.S.C. § 1391(b) and (c). P&G transacts business in
this state, including by promoting the PURCLEAN product that violates Dial’s
trademarks. In addition, Dial’s claims arise in part in this District, and a substantial
portion of the activity about which Dial complains has taken place in this District.
Further, P&G has purposefully availed itself of the privilege of acting in this District by,
among other things, regularly conducting business in this District, including offering and
selling its products through retail stores located in this District, advertising and promoting
its products, including the infringing PURCLEAN product, to customers in this District
and providing a website with its products through which customers in this District can
purchase P&G’s products. Venue is also proper because P&G is subject to personal
jurisdiction in this District.
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PLAINTIFF, ITS PRODUCTS AND SERVICES, AND ITS TRADEMARKS
I. Dial’s Business Generally
Dial is a leading manufacturer of consumer products, including products in 11.
the laundry, home care, beauty, skin and body care, and personal care fields.
Dial’s products include some of the most well-known and best-selling 12.
brands in these categories, including PUREX laundry products, RENUZIT air fresheners,
DIAL skin and body care products, RIGHT GUARD antiperspirant products, and
COMBAT pest-control products.
II. Dial’s Famous PUREX Trademark
In 1922, Lionel S. Precourt and his son Ray Precourt began making their 13.
household bleach product out of a 400 square foot garage in Los Angeles, using their own
homegrown recipe. The following year, they coined the mark PUREX, beginning a brand
and a business that would last throughout the next century. Over many decades, their
company, Purex Corporation, developed into an international manufacturing and
marketing organization that was among the 400 largest industrial enterprises in the
United States.
In the 1970s, the company expanded its use of PUREX from household 14.
bleach to other laundry products, including powder and liquid laundry detergents.
In 1985, Dial acquired the PUREX household and consumer product lines 15.
and all rights to the PUREX mark and brand. At that time, Purex Corporation had
approximately 8,000 employees, more than 40 manufacturing facilities, and sales in
excess of $700 million annually.
Dial, and its predecessors in interest, have used the PUREX mark in 16.
numerous channels of trade on a wide variety of laundry products in the United States.
These products have included laundry detergents, fabric softeners, and bleaching agents.
Representative images of such products are shown below.
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Dial has sold many billions of dollars of products under the PUREX mark 17.
in retail stores located throughout the United States, including national stores such as
Wal-mart, Fry’s, Safeway, CVS, and Walgreens, and regional or local stores such as
Albertsons, Bashas’, and Food City. Dial’s PUREX products are sold at all of these retail
outlets in the Phoenix, Arizona area. Representative annual sales revenues of all PUREX-
branded products over several decades in the United States shows the growth of the
PUREX business: 1953, over $19 million; 1967, over $192 million; 1975, over $440
million; 1981, $650 million. These sales revenues represented sales of a wide variety of
PUREX branded products, including bleach, laundry detergent, fabric softener,
dishwashing liquid, and stain removers. Sales of PUREX laundry products have
significantly increased over the years. For example, annual sales of just PUREX laundry
products in the United States have exceeded $300M since as early as 1998 and were more
than $640 million in 2015 alone.
Dial and its predecessors have expended many millions of dollars over the 18.
years advertising and promoting the PUREX mark through virtually every medium
including through direct mailings, national television, print and radio advertisements, the
Internet, and social media. In 2015 alone, Dial spent approximately $30 million to
advertise and promote PUREX branded-products and the PUREX brand.
Dial’s products sold under the PUREX brand have received significant 19.
unsolicited media coverage for many years, including for example, in national, regional,
and local publications and media outlets. As a result of Dial’s significant promotional
efforts, commercial success, and popularity, PUREX has long been one of the best-
selling laundry detergents in the United States. In a market crowded with many brand-
name and private-label laundry detergents, Dial’s PUREX commanded approximately a
5.7 % market share in 2015.
Based on Dial’s longstanding and extensive use of the PUREX mark, and 20.
the widespread advertising, publicity, promotion, and substantial sales of products and
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services under the PUREX mark, the PUREX mark is well-known and famous to the
general public and has been so for many years.
III. Dial’s Use of Its PURECLEAN Marks
Dial has for many years used the trademark PURECLEAN (as one or two 21.
words) alone or in combination with other wording in connection with its laundry
products since 2006.
a. Dial’s Use of PURECLEAN for Laundry Products
During 2006-2007, Dial used the mark PURECLEAN on packaging and 22.
marketing materials for its PUREX laundry detergent as shown in the representative
examples below consisting of a product label and online advertising materials.
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b. Dial’s Use of PURECLEAN in the PURECLEAN. PUREVALUE. PUREX. Mark
Since 2008 and continuing to the present, Dial has featured PURECLEAN 23.
as the lead term in the mark “PURECLEAN. PUREVALUE. PUREX.” for laundry
detergents and fabric softeners.
Dial has extensively advertised and promoted the PURECLEAN. 24.
PUREVALUE. PUREX. mark in various ways, including on product packaging, in-store
displays, and coupons, in print advertising, digital advertising, and television
commercials, and on Dial’s websites and social media pages. These efforts have reached
many millions of consumers and created many millions of consumer impressions,
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including on a large percentage of Dial’s target market for PUREX products—women
between the ages of 25-49.
For example, from 2008 continuously to the present, Dial has prominently 25.
featured the PURECLEAN. PUREVALUE. PUREX. mark on the packaging for certain
PUREX powder laundry detergent products as shown in the example below. Dial has sold
more than 11 million boxes of the product pictured below between 2008 and 2015,
including 7.5 million in the past four years alone. Dial has sold and distributed these
products through various channels, including laundromats, hotels, schools, hospitals, and
time-share and rental properties, among others. In laundromats, hotel laundry rooms, and
other pay-laundry facilities, these products are typically sold in vending machines. For
time-share and rental properties they are provided or made available to the property
guests. In all of these examples, consumers are exposed to the prominent use of the
PURECLEAN. PUREVALUE. PUREX. mark on the product packaging.
Other companies’ detergent products, including P&G’s TIDE detergent, are also sold in
vending machines at pay-laundry facilities.
Dial has also prominently featured the PURECLEAN. PUREVALUE. 26.
PUREX. mark on its point-of-sale displays for PUREX laundry detergent in retail stores
as shown in the representative examples pictured below: (a) the “Daytona 500” display
appeared in approximately 1,000 Kroger grocery stores during 2011-2012; (b) more than
2,300 of the PUREX display units appeared in various grocery stores including
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Albertsons, Hy-Vee, and Schnucks during 2011-2012; and (c) the PUREX UltraPacks
display appeared in approximately 240 Weis grocery stores and 15 Associated
Wholesalers stores during 2011-2012.
(a)
(b)
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Dial has also prominently featured the PURECLEAN. PUREVALUE. 27.
PUREX. mark in TV advertising as shown by the screenshots below from two TV
commercials that aired in 2012 on numerous national television networks, including but
not limited to ABC, CBS, Bravo, TLC, E!, HGTV, Food, BET, Lifetime, Oxygen, TV
Land, Style, WE, TBS, and Nick at Nite. These TV commercials created over 600 million
consumer impressions.
(c)
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In addition, Dial has prominently featured the PURECLEAN. 28.
PUREVALUE. PUREX. mark on coupons distributed to consumers as shown by the
representative examples below. The three coupons shown below are examples of coupons
distributed during 2011-2012. Dial distributed more than 365 million of these coupons
featuring the PURECLEAN. PUREVALUE. PUREX. mark.
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Dial has also prominently featured the PURECLEAN. PUREVALUE. 29.
PUREX. mark on free-standing ads placed in coupon inserts in Sunday newspapers in
various locations that were targeted at customers of regional and local grocery stores such
as Wakefern/Shoprite, Weis, and Giant Eagle. Below are examples of such ads from
2011-2012. Dial distributed more than approximately 50 million of these ads featuring
the PURECLEAN. PUREVALUE. PUREX. mark in coupon inserts.
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Dial has also prominently featured the PURECLEAN. PUREVALUE. 30.
PUREX. mark in print advertising in 2012 in national magazines, including but not
limited to Better Homes & Gardens, People, Good Housekeeping, Parents, Family
Circle, and Woman’s Day. Examples of such print ads are shown below. These
publications are among the most popular magazines in the country and reach many
millions of the target consumers for PUREX laundry detergent products. These print ads
created more than 235 million consumer impressions.
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Dial has also prominently featured the PURECLEAN. PUREVALUE. 31.
PUREX. mark in digital advertising campaigns, i.e., internet advertising, during 2012.
Dial placed banner ads featuring the PURECLEAN. PUREVALUE.PUREX. mark on
hundreds of websites. Representative examples of such ads are shown below. These
banner ads created over 100 million consumer impressions.
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Since as early as 2012, Dial also has prominently featured the 32.
PURECLEAN. PUREVALUE. PUREX. mark on website advertising and promotion.
Shown below is a representative screenshot from Dial’s current www.purex.com website.
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In addition to its main website, Dial has used the PURECLEAN. 33.
PUREVALUE. PUREX. mark on social media since as early as 2012. Shown below are
representative posts from Dial’s Facebook page featuring the PURECLEAN.
PUREVALUE. PUREX. mark from March – July 2012.
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Before P&G’s announcement of its PURCLEAN product, Dial commenced 34.
plans to further expand its already significant use of the PURECLEAN. PUREVALUE.
PUREX. mark for laundry detergent. For example, Dial has expanded its use of the
PURECLEAN. PUREVALUE. PUREX. mark on its social media pages as shown below
by the representative screenshots from its Facebook, Twitter, and Instagram pages.
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As shown above, Dial’s PURECLEAN and PURECLEAN-formative 35.
trademarks and branding are important components of Dial’s branding, advertising
positioning, and strategy for its PUREX line of laundry products, and have been for
years.
c. Dial’s Use of PURECLEAN for Air Fresheners
Since 2006, Dial also has used the mark PURECLEAN in connection with 36.
its popular RENUZIT brand of air fresheners and deodorizers. Below are representative
examples showing use of the PURECLEAN mark on such products and in product
marketing materials.
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There has long been a connection between air fresheners and deodorizers 37.
and laundry detergent products. Over the years, Dial has frequently sold laundry products
co-branded with Dial’ RENUZIT mark to identify a RENUZIT deodorizing feature of its
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laundry products (as shown in the examples below of products sold between 2006-2010).
P&G has also sold its TIDE laundry detergent and other laundry products co-branded
with P&G’s “febreze” mark to identify a “febreze” deodorizing feature as shown below.
PLAINTIFF’S TRADEMARK APPLICATIONS AND REGISTRATIONS FOR ITS PUREX MARK, PURECLEAN MARK, AND
PURECLEAN. PUREVALUE. PUREX MARK
In addition to its longstanding and strong common-law rights in the 38.
PUREX mark, Dial owns the following federal trademark registrations for the PUREX
mark and PUREX-formative marks covering laundry detergent and other goods (copies
of these registration certificates and assignment records showing ownership by Dial are
attached to the Complaint as Exhibit A):
Mark Reg. No. /Reg. Date Goods / Date of First Use
PUREX 1876275Jan. 31, 1995
Laundry bleach. Date of First Use: October 10, 1923
PUREX 3094059May 16, 2006
Laundry care preparations, namely, fabric softener, fabric freshener, dryer sheets. Date of First Use: July 16, 2003
PUREX 1052724Nov. 16, 1976
Laundry detergent. Date of First Use: March 6, 1970
PUREX 0578630Aug. 11, 1953
General cleaning preparations in liquid and dry forms having bleaching,
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Mark Reg. No. /Reg. Date Goods / Date of First Use
cleaning, and disinfecting properties. Date of First Use: October 10, 1923
PUREX NO SORT
4607365Sept. 16, 2014
Laundry detergents. Date of First Use: January 30, 2014
In addition to its longstanding and strong common-law rights in the its 39.
PURECLEAN. PUREVALUE. PUREX. mark and its PURECLEAN mark, Dial also
owns the following registration and pending application for such marks (copies of the
registration and pending application and assignment records showing ownership by Dial
are attached to the Complaint as Exhibit B):
Mark Reg. No. / App. No.Status
Goods / Date of First Use
PURECLEAN. PUREVALUE. PUREX.
Reg. No. 4132910Registered: Apr. 24, 2012
Fabric softeners; laundry detergents. Date of First Use: February 2, 2011
PURECLEAN App. No. 86735117Filed: Aug. 24, 2015
Air fragrancing preparations. Date of First Use: January 8, 2007
P&G’S WRONGFUL ACTS
P&G is the largest producer of home and personal care products in the 40.
United States and is the largest advertiser in the United States. TIDE detergent, which has
long been the best-selling detergent in the United States, is one of P&G’s best-selling and
most heavily advertised products in the United States.
P&G announced its plans to release a new laundry detergent under the 41.
brand PURCLEAN in May 2016. An example of the product as advertised by P&G in its
press releases and on its websites is shown below:
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In the product photos in its announcements, P&G displays the PURCLEAN 42.
trademark as a separate mark from the TIDE trademark. On the label shown above,
PURCLEAN appears on a separate line from TIDE and each mark is displayed in its own
font and stylization. P&G also has placed the trademark notice “TM” next to the
PURCLEAN mark, as shown below in the close-up of the bottle.
P&G has filed a trademark application for the PURCLEAN mark. 43.
Specifically, P&G filed intent-to-use U.S. Application Serial No. 86785110 on October
12, 2015 for the mark PURCLEAN covering laundry detergents (a copy of P&G’s
trademark application for the PURCLEAN mark is attached as Exhibit C).
On February 6, 2016, the United States Patent and Trademark Office 44.
(“USPTO”) issued a refusal of Application Serial No. 86785110 on grounds of a
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likelihood of confusion with Dial’s U.S. Registration No. 4132910 for its PURECLEAN.
PUREVALUE. PUREX. mark. In particular, the Examining Attorney at the USPTO
assigned to review P&G’s application concluded that P&G’s mark PURCLEAN shared
“identical phonetic equivalent wording” with Dial’s PURECLEAN. PUREVALUE.
PUREX. mark and that P&G’s and Dial’s goods were both laundry detergents (a copy of
this Office Action issued by the Examining Attorney is attached as Exhibit D).
P&G’s PURCLEAN mark is identical in pronunciation, commercial 45.
impression, and meaning to PURECLEAN. In addition, P&G’s PURCLEAN mark is
virtually identical in appearance to PURECLEAN.
P&G plans to sell, promote and advertise laundry detergent under its 46.
PURCLEAN mark in the same trade channels as Dial, including in grocery stores, and
big-box stores, and through e-retailers such as Amazon.com.
The customers for both parties’ laundry detergent products are identical or 47.
overlapping, i.e., the general public.
It appears that P&G’s plans to launch its PURCLEAN laundry detergent 48.
have come to fruition based on: (1) its recent posting of the PURCLEAN product on its
website at http://tide.com/en-us/shop/type/liquid/tide-purclean; (2) print ads recently
appearing in U.S. publications; and (3) its recent social media promotion of its
PURCLEAN laundry detergent, including an April 22, 2016 post on Facebook promoting
its PURCLEAN product “coming soon to a store near you in May 2016” (copies of
examples of these advertisements and promotions are attached as Exhibit E).
IV. Harm to Dial and the General Public
Although Dial’s PUREX is a popular and successful product line with 49.
approximately a 5.7% market share, TIDE dominates the product category with
approximately 42.8% share of the U.S. laundry detergent market with its TIDE and TIDE
Simply Clean products.
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Dial spends significant amounts promoting and advertising its PUREX 50.
mark, but P&G’s advertising of TIDE dwarfs Dial’s expenditures. As a result, there is a
likelihood that P&G’s massive advertising and promotional efforts will saturate the
market and dilute the distinctiveness of Dial’s PUREX mark. There is further the
likelihood that P&G’s massive advertising and promotional efforts for its new
PURCLEAN laundry detergent will overwhelm Dial’s use of its PURECLEAN Marks
and PUREX mark. As a result, consumers are likely to mistakenly believe that Dial
and/or its products sold under its PUREX mark and PURECLEAN Marks are affiliated
with, connected to, or offered by P&G, or that Dial is infringing P&G’s PURCLEAN mark.
P&G’s use of its PURCLEAN mark in connection with the offering for 51.
sale, sale, distribution or advertising of laundry detergent is likely to cause confusion, to
cause mistake, or to deceive, and unless enjoined, will irreparably harm the general
public, which has an interest in being free from confusion, mistake, and deception.
P&G’s activities already have caused irreparable harm to Dial and Dial’s 52.
PUREX and PURCLEAN Marks, and if not enjoined, will continue to irreparably harm
Dial and Dial’s PUREX and PURECLEAN Marks.
P&G began using the PURCLEAN mark more than 90 years after Dial and 53.
its predecessors first used its PUREX mark, and did so with knowledge of Dial’s prior
use of its PURECLEAN Marks, and Dial’s prior use and registration of its PUREX and
PURECLEAN. PUREVALUE. PUREX. marks. P&G knew or should have known that
its activities described above were infringing, and thus P&G acted knowingly, willfully,
in reckless disregard of Dial’s trademark rights, and in bad faith.
Dial has no adequate remedy at law because money damages cannot 54.
compensate Dial for the harm to its reputation and goodwill and the loss of control over
its famous PUREX trademark and the PURECLEAN Marks that will result from P&G’s
unauthorized use of PURCLEAN.
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FIRST CLAIM FOR RELIEF Trademark Infringement Under
Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1)
Dial repeats and realleges each and every allegation set forth above. 55.
Without Dial’s consent, P&G used and continues to use in commerce 56.
reproductions, copies, and colorable imitations of Dial’s PUREX, and PURECLEAN.
PUREVALUE. PUREX. federally registered trademarks, as set forth above, in
connection with the offering, distribution, and/or advertising of laundry products, which
is likely to cause confusion, or to cause mistake, or to deceive, in violation of Section
32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
P&G’s activities described above have at all times been willful and/or 57.
knowing.
As a direct and proximate result of the actions of P&G described above, 58.
Dial has been damaged and will continue to be damaged.
As a direct and proximate result of the actions of P&G described above, 59.
P&G has been unjustly enriched and has profited from appropriating the goodwill and
recognition of the PUREX and PURECLEAN. PUREVALUE. PUREX. marks.
SECOND CLAIM FOR RELIEF Trademark Infringement, False Designation
of Origin, Passing Off, and Unfair Competition Under Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A)
Dial repeats and realleges each and every allegation set forth above. 60.
P&G’s actions, as described above, including without limitation the use and 61.
promotion of laundry detergent under its PURCLEAN mark, are likely to cause
confusion, or to cause mistake, or to deceive as to the origin, sponsorship, or approval of
Dial, its products, its PUREX and PURECLEAN Marks, and/or its commercial activities
by or with P&G, and thus constitute trademark infringement, false designation of origin,
and unfair competition in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C.
§ 1125(a)(1)(A).
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P&G’s activities described above have at all times been willful and/or 62.
knowing.
As a direct and proximate result of the actions of P&G described above, 63.
Dial has been damaged and will continue to be damaged.
As a direct and proximate result of the actions of P&G described above, 64.
P&G has been unjustly enriched and has profited from appropriating the goodwill and
recognition of the PUREX and PURECLEAN Marks.
THIRD CLAIM FOR RELIEF Trademark Dilution Under Section
43(c) of the Lanham Act, 15 U.S.C. § 1125(c)
Dial repeats and realleges each and every allegation set forth above. 65.
Dial has engaged in extensive nationwide advertising, promotion, and use 66.
of the PUREX mark for over 90 years. Further, Dial has had massive sales of its goods
and services sold under the PUREX mark for decades.
Dial’s PUREX mark has for many years received extensive unsolicited 67.
media attention nationwide. Such extensive and frequent media attention and commercial
success has had a substantial impact on the public and has long created an association in
the minds of consumers between the PUREX mark and Dial, and the PUREX mark is
famous and was famous nationwide before P&G commenced its unauthorized use of the
PURCLEAN mark.
P&G’s actions described above, all occurring after PUREX mark became 68.
famous, are likely to cause dilution by blurring of the distinctive quality of the famous
PUREX mark in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
P&G’s activities described above have at all times been willful and/or 69.
knowing.
As a direct and proximate result of the actions of P&G described above, 70.
Dial and its famous PUREX mark has been damaged and will continue to be damaged.
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FOURTH CLAIM FOR RELIEF Injury to Business Reputation; Dilution
Under A.R.S § 44-1448.01
Dial repeats and realleges each and every allegation set forth above. 71.
Dial owns the federally registered and famous PUREX mark. 72.
P&G’s use of the PURCLEAN mark occurred after the PUREX mark 73.
became famous and is likely to dilute the distinctive quality of Dial’s famous PUREX
mark.
P&G’s conduct constitutes injury to Dial’s business reputation and dilution 74.
of the famous PUREX mark under A.R.S § 44-1448.01.
As a result of P&G’s conduct, Dial and its PUREX mark have suffered and 75.
will continue to suffer damages and P&G has acquired profits at Dial’s expense.
P&G’s conduct has caused Dial and its PUREX mark irreparable harm. 76.
Unless enjoined permanently, P&G’s conduct will continue to injure Dial’s business
reputation and cause dilution of the PUREX mark.
P&G’s activities described above have at all times been willful and/or 77.
knowing.
As a result of P&G’s conduct, Dial is entitled to the remedies provided in 78.
Title 44, Chapter 10 pursuant to A.R.S § 44-1448.01(B).
FIFTH CLAIM FOR RELIEF Common Law Trademark Infringement, Unfair
Competition, and Misappropriation
Dial repeats and realleges each and every allegation set forth above. 79.
P&G’s actions described above constitute common law trademark 80.
infringement, unfair competition, and misappropriation of Dial’s goodwill under the
common law of Arizona and other states.
The actions of P&G described above have at all times relevant to this action 81.
been willful.
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As a direct and proximate result of the actions of P&G alleged above, Dial 82.
has been damaged and will continue to be damaged.
PRAYER FOR RELIEF
WHEREFORE, Dial prays that this Court enter judgment in its favor on each and
every claim for relief set forth above and award it relief including, but not limited to, the
following:
A. An injunction temporarily, preliminarily, and permanently enjoining P&G
and its employees, agents, partners, officers, directors, owners, shareholders, principals,
subsidiaries, related companies, affiliates, distributors, dealers, retailers, and all persons
in active concert or participation with any of them:
1. From using the PURCLEAN mark, and any other trademarks,
names, and other identifiers that are confusingly similar to Dial’s PUREX and
PURECLEAN Marks, in any unauthorized manner, including without limitation,
on or in connection with laundry detergent and related products and any associated
packaging, displays, and advertising and promotional materials in any media or
format;
2. From using the PURCLEAN mark, and any other trademarks,
names, and other identifiers that are likely to dilute Dial’s PUREX mark, in any
unauthorized manner, including without limitation, on or in connection with
laundry detergent and related products and any associated packaging, displays, and
advertising and promotional materials in any media or format;
3. From representing by any means whatsoever, directly or indirectly,
that P&G, any products or services offered by P&G, or any activities undertaken
by P&G, are authorized by, licensed by, sponsored or approved by, connected
with, guaranteed by, or produced, or otherwise affiliated with Dial or its PUREX
mark, PURECLEAN Marks, or the products sold under those marks;
4. From otherwise competing unfairly with Dial in any manner;
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5. From shipping, delivering, transferring, or otherwise disposing of, in
any manner, any laundry products or related products and any associated
packaging, displays, and advertising and promotional materials that bear the
PURCLEAN mark or any other mark confusingly similar to Dial’s PUREX and
PURECLEAN Marks; and
6. From assisting, aiding or abetting any other person or business entity
in engaging in or performing any of the activities referred to in subparagraphs
A.1-5 above.
B. An Order directing P&G to withdraw and retract from the marketplace in
the United States all products, product packaging and displays, product inserts and
instructions, data sheets, advertisements, commercials, and other materials in connection
with laundry detergents and any related goods, that display the PURCLEAN mark and/or
any marks, names, and designs that are confusingly similar to Dial’s PUREX and
PURECLEAN Marks;
C. An Order requiring P&G to pay Dial the cost for corrective advertising
and/or engage in corrective advertising in a manner directed by the Court.
D. An Order directing P&G to file with this Court and serve on Dial’s
attorneys, thirty (30) days after the date of entry of any injunction, a report in writing and
under oath setting forth in detail the manner and form in which it has complied with the
injunction;
E. An Order requiring P&G to account for and to pay any and all profits
arising from the foregoing acts of infringement, false designation of origin, unfair
competition, and an increasing of such profits for payment to Dial in accordance with
15 U.S.C. § 1117, and other applicable statutes and laws;
F. An Order requiring P&G to pay compensatory damages in an amount as yet
undetermined caused by the foregoing acts of infringement, false designation of origin,
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unfair competition, and trebling such compensatory damages for payment to Dial in
accordance with 15 U.S.C. § 1117, and other applicable statutes and laws;
G. An Order requiring P&G to pay Dial’s costs and attorney’s fees in this
action pursuant to 15 U.S.C. § 1117, and other applicable statutes and laws;
H. An Order requiring P&G to pay punitive damages in an amount as yet
undetermined caused by the foregoing acts of P&G.
I. Restitutionary relief against P&G and in favor of Dial, including
disgorgement of wrongfully obtained profits and any other appropriate relief;
J. An Order requiring P&G to pay the costs of suit and reasonable attorneys’
fees to the extent not specified above;
K. An Order requiring P&G to abandon U.S. Application Serial No. 86785110
for the mark PURCLEAN; and
L. Other relief as the Court may deem appropriate, including without
limitation all remedies provided for under any other applicable laws.
JURY DEMAND
Pursuant to Fed. R. Civ. P. 38, Dial respectfully demands a trial by jury for all
claims so triable.
Dated: May 4, 2016 __/s/ William G. Klain_______________
William G. Klain (AZ Bar No. 015851) George H. King (AZ Bar No. 013287) Lang & Klain, P.C. 8767 E. Via de Commercio, Suite 102 Scottsdale, AZ 85258 [email protected] [email protected] [email protected] Telephone: 480-947-1911
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David M. Kelly (DC Bar No. 642080; pro hac vice application pending) Robert D. Litowitz (DC Bar No. 358658; pro hac vice application to be filed) Anjie Vichayanonda (VA Bar No. 85471; pro hac vice application pending) KELLY IP, LLP 1919 M Street, NW, Suite 610 Washington, D.C. 20036 Telephone: (202) 808-3570 Attorneys for Plaintiff The Dial Corporation
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