## Facts

- Storck manufactured and distributed Werther’s Original butter candies and owned the WERTHER’S ORIGINAL trademark and related trade dress.
- Nabisco planned to introduce Life Savers Delites, a competing low-calorie butter candy under the Life Savers brand.
- Nabisco’s packaging prominently compared its product to Werther’s Original by stating it was “25% lower in calories than Werther’s Original candy.”
- Nabisco asserted its intended consumer packaging would display the registered trademark symbol for Werther’s and include a disclaimer stating that Werther’s Original is made by Storck and that Storck does not make or license Life Savers Delites.
- Storck, relying in part on prototype packaging it obtained before launch, sued under the Lanham Act for trademark and trade dress infringement and sought a preliminary injunction to stop Nabisco’s planned packaging.
- The district court granted a preliminary injunction barring Nabisco from using its proposed packaging, without an evidentiary hearing establishing likely consumer confusion.
- Nabisco appealed the preliminary injunction.

## Issues

1. Whether Storck showed a likelihood of consumer confusion from Nabisco’s comparative use of “Werther’s Original” on packaging that included clear source branding and an explicit disclaimer, sufficient to support a preliminary injunction under the Lanham Act.
2. Whether Storck showed a likelihood of success on its trade dress claim based on the overall look of the Delites packaging.
3. Whether the district court applied the correct standard for preliminary relief by requiring a likelihood (rather than a mere possibility) of confusion supported by evidence.

## Decision

- The Seventh Circuit reversed the grant of a preliminary injunction and remanded.
- The court held Storck had not shown a likelihood of consumer confusion on the record presented.
- The court treated Nabisco’s reference to Werther’s Original as comparative advertising, not source-identifying use, given the prominent Life Savers branding and disclaimer.
- The court concluded the trade dress claim was not stronger than the trademark claim for purposes of preliminary relief.
- The court found the district court relied on speculation and an insufficient finding of “possibility” of confusion, particularly in light of Nabisco’s revised packaging with clarifying trademark notices and disclaimer.

## Legal Principles

- A preliminary injunction in a trademark case requires a showing of likely consumer confusion; a speculative possibility of confusion is insufficient.
- Comparative advertising may lawfully refer to a competitor’s trademark when the use is clearly comparative and not likely to mislead consumers about source, sponsorship, or affiliation.
- Clear labeling, prominent use of the advertiser’s own brand, and explicit disclaimers can significantly reduce the likelihood of confusion in comparative packaging.
- Courts should consider public interest and competitive effects when evaluating injunctive relief that would restrict truthful comparative advertising.

## Conclusion

The Seventh Circuit vacated the preliminary injunction because Storck did not establish a likelihood of confusion from Nabisco’s comparative packaging that used clear branding and an explicit disclaimer, and because preliminary relief cannot rest on conjecture rather than evidentiary support.


August Storck K.G. v. Nabisco, Inc., 59 F.3d 616 (7th Cir. 1995)