Since 1994, when the Federal Circuit issued its ruling in Conopco, Inc. v. May Department Stores Co., 46 F.3d 1556 (Fed. Cir. 1994), private labelers have had broader latitude than other competitors as to the amount of similarity between their products and name brands. McNeil Nutritionals LLC v. Heartland Sweeteners LLC, 511 F.3d 350 (3d Cir. 2007) and Johnson & Johnson v. Actavis Group hf, 87 U.S.P.Q. 2d 1125 (S.D.N.Y. 2008) tried to roll back private labelers' ability to copy name brand product packaging. In this commentary, Janet Marvel, a partner at Pattishall, McAuliffe, Newbury, Hilliard and Geraldson, discusses McNeil and Johnson & Johnson and analyzes the relaxed infringement standards for private labelers. She writes:
In McNeil Nutritionals LLC v. Heartland Sweeteners LLC, 511 F.3d 350 (3d Cir. 2007), the Third Circuit Court of Appeals decided that "arguably, under our holding, store brands can 'get away' with a little more similarity than other defendants' products when they display prominently a well-known label on their packages." Hence, at least in the Third Circuit, private labelers can continue to copy in relative comfort.
Johnson & Johnson v. Actavis Group hf, 87 U.S.P.Q. 2d 1125 (S.D.N.Y. 2008) is less valuable as precedent, since the court's opinion on summary judgment simply found that there were genuine issues of material fact as to Johnson & Johnson's trademark claims. Nonetheless, it is interesting for its discussion of Johnson & Johnson's trade dress claims and Actavis' argument that it could not be liable for infringement arising from designs its customers created. This case has since settled.
Private labelers, unlike the rest of us, have been able to closely imitate national brand packaging. This latitude may arise from two sources. First, grocery, drug and convenience stores, common users of private labels, are major customers for many name brands. Name brands have a strong incentive not to sue such entities. Johnson & Johnson and McNeil sued not their customers, but the entities that packaged private label products. This was perhaps to avoid confrontation with customers, but also perhaps to address many private labeled packages, destined for different customers, at once.
(citations omitted)