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The makers of Tylenol have one less headache now that a federal judge has issued an injunction that forces a competitor to stop using the brand name “Tempanol” for a dental pain relief medication. In his 14-page opinion in M cNeil Consumer Brands Inc. v. U.S. DenTek Corp., U.S. District Judge Harvey Bartle III found that Tylenol, with more than $1 billion in annual sales, has become a “household name” and is therefore entitled to extra protection under the Federal Trademark Dilution Act. Under the FTDA, a trademark holder does not need to show “likelihood of confusion” but can win an injunction simply by showing that “there is a mental association by the reasonable consumer between the two names,” Bartle found. McNeil — which holds trademarks for Tylenol, Tylenol Flu, Tylenol Codeine 3 and Tylenol PM — has previously used the FTDA to stop competitors from marketing painkillers under the names Actenol, Supernol and Hydenol. In January, McNeil filed suit against DenTek, which began marketing Tempanol in August 1996 and now enjoys annual sales of about $13.5 million. Bartle found that courts have outlined 13 factors to be considered in deciding whether to issue an injunction under the FTDA. In his opinion, Bartle discusses only those factors that were relevant to his conclusions — the nature and similarity of the marks; the similarity of the products covered by the marks; the level of sophistication of the general public; the renown of the respective marks; the mental association of the two marks; the shared customers and geography; the quality of the junior use; and the interrelated factors of duration of the junior use, the harm to the junior user and any delay in instituting the suit. Bartle found that each one weighed in favor of granting the injunction. “The average consumer does not put a significant amount of time or thought into the purchase of off-the-shelf pain relievers, as one might when acquiring a car or furniture. When people buy products in an unsophisticated manner, the likelihood of blurring is greater than when more expensive items are involved,” Bartle wrote. McNeil began selling Tylenol as a children’s pain reliever in 1955 and has continued to use the name since then on various non-aspirin analgesic products. Adult Tylenol was first marketed in 1961, and Extra-strength Tylenol was introduced in 1975. Currently, Bartle found, Tylenol is the best-selling over-the-counter pain reliever in the United States. Since its introduction, sales of the Tylenol line have approached $19 billion with $1 billion in 1999 alone. And over the last 10 years, McNeil has spent more than $220 million annually to advertise and promote Tylenol. DenTek’s Tempanol products, which first were marketed in August 1996, are also analgesics but are used only for the temporary relief of dental pain resulting from toothaches, lost fillings, loose caps and bridges, and teething. Tempanol is applied directly to the affected teeth or gum. Like Tylenol, Tempanol is sold both in major retail chain stores and through online retail stores. Bartle found that “Tylenol” is also a “highly distinctive” trademark since the name is “a made-up word” that is not associated with some inherent quality or characteristic of the product. “It is not an understatement to say that today [Tylenol] is probably the strongest mark in the field of analgesic pain relievers, and that it is arbitrary, fanciful, and distinctive, and has acquired strong secondary meaning,” Bartle wrote. The Tylenol name even found its way into the script of the 1980 popular movie “Airplane,” Bartle said, when the traffic controller, in describing the endangered passenger plane, announced, “ell, it’s a big pretty white plane with a red stripe, curtains at the windows, wheels, and it just looks like a big Tylenol.” By the time DenTek began to market Tempanol, Bartle found, two courts had already enjoined the use of marks that were found to infringe upon the Tylenol mark. As a “highly distinctive mark,” Bartle found, Tylenol is “more vulnerable to dilution than one less distinctive” and “is deserving of the highest degree of trademark protection.” Bartle found there is “substantial similarity” between the Tylenol and Tempanol marks. Even before the FTDA was passed, McNeil succeeded in winning an injunction in 1976 against American Home Products to stop its use of “Extranol,” a name that U.S. District Judge George H. Barlow of the District of New Jersey found was likely to be perceived by consumers as an “extra-strength version of Tylenol.” Bartle found that the words “Tylenol” and “Tempanol” are “even closer in spelling and sound” than the names Extranol, Actenol, Supernol and Hydenol. “Both marks in issue begin with the letter T, both have three syllables with the accent on the first syllable, and the last syllable of both is -nol,” Bartle wrote. Bartle also found that “the mental association of these two marks for off-the-shelf analgesics [is] compelling.” While Tempanol, which is used for dental pain, has a more limited focus than Tylenol, Bartle found that “they are clearly similar and to some extent overlap in purpose. This similarity increases the likelihood of blurring, without regard to the issue of competition which is not a necessary element under the FTDA.” DenTek’s lawyers, R. Mark Ambrust of Ruthrauff & Ambrust in Philadelphia and Brian F. McMahon of White McMahon & Potter in Santa Rosa, Calif., argued that DenTek’s choice of the name “Tempanol” was innocent and was not an attempt to capitalize on the word “Tylenol.” But Bartle said that “given the many factors that weigh in favor of dilution, we do not find it to be significant that DenTek’s conduct and intentions were pure.” DenTek also argued that it will suffer severe financial harm if it is prohibited from using the mark Tempanol, since its sales have exceeded $13.5 million and it has spent $340,000 in advertising and marketing. But Bartle said, “Even assuming these amounts to be accurate, they pale into insignificance compared to those associated with Tylenol. We do not believe that we should deny McNeil relief under the undisputed facts before us simply because DenTek may suffer some financial detriment as a result.”‘ McNeil was represented by attorneys M. Kelly Tillery and Gregory C. DiCarlo of Leonard Tillery & Sciolla in Philadelphia, along with Thomas C. Morrison and Mark S. Reinar of Patterson Bellknap Webb & Tyler in New York.

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