Colgate-Palmolive Sues Over ‘Total’ Trademark

July 31, 2009

Colgate-Palmolive Co. sued Johnson & Johnson and Chattem Inc., Friday, saying that both companies had used Colgate’s “Total” brand name in violation of the company’s trademark.

In two separate lawsuits, filed in U.S. District Court in Manhattan, Colgate-Palmolive alleges trademark infringement, unfair competition, trademark dilution, deceptive trade practices and unjust enrichment.

The company demands that Johnson & Johnson and Chattem withdraw trademark applications for their Total products — which include Johnson & Johnson’s Listerine Total Care line of products and Chattem’s Act Total Care mouthwash — stop using the Total name.

A representative from Johnson & Johnson declined to comment. A representative from Chattem Inc could not immediately be reached for comment.

Colgate-Palmolive’s Total toothpaste is the leading toothpaste in the United States, generating over $3 billion in sales since its launch in 1997, and is among the company’s “crown jewels,” both lawsuits said.

In the case of Johnson & Johnson, Colgate-Palmolive said it had entered into a “joint promotion and collaboration agreement” with Pfizer Consumer Health Care Division, which owns the Listerine mouthwash brand, prior to Johnson & Johnson’s acquisition of Pfizer in 2006.

“The parties … wanted to create a link in the minds of consumers between Total (the #1 toothpaste brand) and Listerine (the #1 mouthwash brand) in order to jointly build goodwill and increase the sales of both party’s products,” the lawsuit said.

But after Johnson & Johnson acquired Listerine, the company launched Total Care mouthwash without the consent of involvement of Colgate-Palmolive, the lawsuit said.

The Listerine Total Care line of products “are likely to cause confusion with and dilute Colgate Palmolive’s famous Total marks,” said the lawsuits, filed in U.S. District Court in Manhattan.

Johnson & Johnson and McNeil-PPC Inc “recognized the significant value of Colgate-Palmolive’s Total brands and decided to appropriate the value for themselves,” the lawsuit said.

In the case of Chattem, its Act Total Care mouthwash also trades off “the unique concept and goodwill of Total, said the lawsuit against Chattem Inc and Signal Investment and Management.

(Reporting by Edith Honan; Editing by Richard Chang)

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