Legal News

Splenda Scores Injunction; No Calories But ?Inherently Distinctive?

By Dan Slater

Aside from noting that many of the Law Blog’s neighbors mourned the 2004 closure of the Domino Sugar factory, which had been a Brooklyn landmark since the 1880’s, we don’t much follow the goings-on in the sweetener industry.

As is the case with many industries, it takes a lawsuit to pique our interest. So here we go: Splenda, the nation’s best-selling sugar substitute, has won an injunction that bars Heartland Sweeteners, the maker of a generic version of Splenda, from continuing to distribute store-brand products that mimic Splenda’s packaging. Here’s the story from the Legal Intelligencer.

Heartland’s lawyer, Abbe F. Fletman of Flaster Greenberg, reportedly tried to argue that Splenda’s trade dress was no more than a combination and refinement of common elements already found in the packaging of other sweetener products. He said that McNeil Nutritionals, the company that makes Splenda, chose yellow for Splenda’s packaging to capitalize on consumers’ association of yellow with sugar, and that the images of coffee, iced tea, fruit and baked goods on Splenda’s packaging simply followed an established custom in the sweetener market.

But District Judge John R. Padova, in a 27-page opinion, rejected the argument that Splenda’s trade dress uses elements so common in the sweetener market that it cannot be inherently distinctive.

He wrote, “while it is true that the packaging of other sweetener products often contain depictions of coffee, iced tea, baked goods, fruit, and/or cereal, these depictions do not diminish the inherent distinctiveness of the Splenda trade dress when we consider the trade dress as a whole.” The fact that other sweetener products used a yellow, blue and white color scheme prior to the introduction of Splenda, Padova said, “does not detract from Splenda’s inherent distinctiveness.”

Between its introduction in 2000 and 2006, Splenda sales grew from approximately $32 million to approximately $410 million. In 2006, Splenda sales accounted for 60 percent of the low-calorie sweetener market.

Full post as published by Law Blog - WSJ.com on July 09, 2008 (boomark / email).