On January 29th, New York City-based consumer product company Colgate-Palmolive (NYSE:CL) filed a lawsuit alleging trademark infringement in the Southern District of New York against Grand Rapids, MI-based oral healthcare company Ranir LLC. At issue in the case are toothbrushes being sold by Ranir which allegedly infringe upon the “360°” trademark, which is owned by Colgate.
According to its complaint, Colgate has been marketing toothbrushes and other oral health products under the “360°” trademark since 2005. Toothbrushes branded with the “360°” trademark are designed to provide consumers with a whole mouth cleaning experience with the use of innovative features such as multi-functioning bristles, gentle polishing cups, a raised cleaning tip and a cheek and tongue cleaner. Colgate states that, in the last five years, sales of 360°-branded Colgate toothbrushes have achieved hundreds of millions of dollars in sales, placing the product line among the best-selling toothbrush brands in the United States.
Since releasing the 360° branded line of toothbrushes and oral care products, Colgate has pursued federal trademark registrations to cover the use of the brand in commerce. These include U.S. Trademark Registration No. 2980009, which covers the use of the standard character mark “360°” on toothbrushes and was registered in 2005; U.S. Trademark Registration No. 3238154, which covers an illustration mark including the stylized characters “360°” registered in 2007; U.S. Trademark Registration No. 4818782, registered in 2014 to cover the standard character mark “360° ENAMEL HEALTH”; and U.S. Trademark Registration No. 4144306, registered in 2012 to cover the standard character mark “360° FRESH ‘N PROTECT”.
According to Colgate, defendant Ranir began operating unlawfully in the marketplace beginning in late 2017 when it launched a new line of oral health products, including whitening strips, dental floss and toothbrushes, under the brand name “SMILE 360”. Colgate notes that Ranir is not currently affiliated with Colgate and has never licensed the use of the “360°” marks. However, Ranir should have had actual notice of Colgate’s rights to the “360°” marks as Ranir had been a contract manufacturer for Colgate up to December 31st, 2017, producing travel-sized toothpaste products under the Colgate brand for several years. Colgate also alleges that Ranir continues to employ a former Colgate employee in connection with oral care product development.
Colgate alleges that Ranir’s use of the word “SMILE” in its product branding does nothing to help dispel consumer confusion in the marketplace. Colgate argues that “smile” is a descriptive term when used in connection with oral care products and thus cannot distinguish the “SMILE 360” branding from the “360°” marks. Consumers are also used to seeing the “360°” mark in conjunction with other branding words like “ENAMEL HEALTH” and “FRESH ‘N PROTECT”, further contributing to the confusion caused by the “SMILE” branding. Colgate further argues that Ranir’s use of the “SMILE 360” branding is a deliberate attempt to trade on the goodwill of Colgate’s marks and create a false impression on consumers as to the source or sponsorship of Ranir’s products.
Colgate’s suit includes a total of four claims for relief including claims for federal trademark infringement, federal unfair competition, trademark infringement and unfair competition under New York state law, and dilution under New York state law. Colgate seeks a permanent injunction barring Ranir from selling the “SMILE 360” products, a court order transferring any domain name including a prohibited mark to Colgate as well as trebled damages for federal trademark infringement.
The success of Colgate’s 360° brand is discussed in the company’s recent earnings report for the fourth quarter of 2017. In North America, Colgate increased its market share in the manual toothbrush category up to 40.7 percent, the increase supported in part by the success of the Colgate Total 360° 4 Zone toothbrush. Sales of Colgate 360° manual toothbrushes were also cited by the company as supporting increased sales in both Europe and Latin America, regions which contributed a combined 41 percent of Colgate’s total sales on the quarter. Overall, 2017’s fourth quarter saw net sales of nearly $3.9 billion for Colgate, a year-over-year increase in sales of 4.5 percent when compared to the fourth quarter of 2016.