## Facts

- Bristol sold Excedrin PM, a combination analgesic and sleep aid, since 1968 with largely consistent packaging featuring a dark blue nighttime theme, “Excedrin PM” in white lettering, and tablet imagery.
- McNeil, maker of Tylenol products, introduced Tylenol PM in 1991 using Tylenol’s brand-forward “family” packaging with “PM” and nighttime cues, and sought registration for “TYLENOL PM.”
- Bristol sued under Lanham Act § 43(a) and state unfair competition law, alleging (1) trade dress infringement by Tylenol PM packaging and (2) unlawful use of “PM” on a combination analgesic/sleep aid.
- The district court granted a preliminary injunction against McNeil’s Tylenol PM trade dress based on likely confusion, but denied an injunction against use of “PM,” finding it descriptive of nighttime use and unprotected absent secondary meaning.
- McNeil appealed the trade-dress injunction; Bristol cross-appealed the denial of relief as to “PM.”

## Issues

1. Whether Bristol showed a sufficient likelihood of consumer confusion between the parties’ packaging to justify a preliminary injunction against McNeil’s Tylenol PM trade dress.
2. Whether “PM,” as used on an analgesic/sleep aid, is protectable under Lanham Act § 43(a) at the preliminary-injunction stage, either as inherently distinctive or through secondary meaning.

## Decision

- The court reversed the preliminary injunction against McNeil’s Tylenol PM trade dress.
- The court affirmed the denial of a preliminary injunction barring McNeil’s use of “PM.”
- The case was disposed as affirmed in part and reversed in part.

## Legal Principles

- Under Lanham Act § 43(a), the central question is whether the challenged packaging or terminology is likely to cause confusion as to the origin or sponsorship of goods.
- Likelihood of confusion in trade dress must be assessed based on the overall commercial impression, including prominent source-identifying house marks, not by isolating shared design features.
- Packaging elements that primarily convey product purpose (e.g., nighttime cues, dark backgrounds, “PM,” pill depictions) are weak source indicators; a competitor’s use of such descriptive cues is less likely to confuse when distinct, well-known house marks are prominent.
- A descriptive term is protectable only upon proof of secondary meaning—consumer perception that the term’s primary significance is to identify a single source rather than describe the product’s intended use.
- At the preliminary-injunction stage, the plaintiff bears the burden to make a sufficient showing of likely success and confusion; a limited or speculative showing of actual confusion and secondary meaning will not support broad injunctive relief.

## Conclusion

The Second Circuit held that prominent, distinct house marks and largely descriptive nighttime packaging cues defeated a preliminary showing of likely trade-dress confusion, and that “PM” describes nighttime use and could not be preliminarily monopolized absent an adequate showing that consumers associate “PM” alone with Bristol.


Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033 (2d Cir. 1992)