## Facts

- A manufacturer of sanitary pads (catamenial bandages) adopted and used the coined word “Kotex” as both its trademark and trade name to market a product whose use could not be directly described in common advertising channels.
- Through extensive promotion focused on the mark alone, “Kotex” became strongly identified by consumers with the plaintiff’s sanitary pads.
- A later entrant sold tablets for relieving menstrual and other pains using the mark “Kotex” and through a corporation named “Kotabs, Inc.” (a contraction of “Kotex-Tablets”).
- The district court found the plaintiff owned a valid trademark and that defendants’ use constituted trademark infringement and unfair competition, and enjoined use of “Kotex” and “Kotabs.”
- On appeal, defendants did not challenge the mark’s validity, but argued the plaintiff’s rights were limited to goods of “the same descriptive properties,” and did not reach pain-relief tablets.

## Issues

1. Whether the owner of a strong, coined trademark for sanitary pads may enjoin use of the identical mark and a closely related variant on menstrual-pain tablets, even if the goods are not of the “same descriptive properties” under the registration statute.
2. Whether use of “Kotex” and “Kotabs” on a closely related menstrual product creates likely confusion or constitutes unfair competition by trading on the senior user’s goodwill.

## Decision

- The Third Circuit affirmed the injunction.
- The court held the plaintiff’s trademark rights were not confined to goods of “the same descriptive properties” listed in the registration framework.
- Because “Kotex” was a strong, arbitrary mark with substantial consumer recognition, defendants’ use of “Kotex” and “Kotabs” on menstrual-related tablets was likely to mislead consumers and improperly appropriate the plaintiff’s goodwill.
- Defendants were enjoined from using both “Kotex” and “Kotabs” in marketing their tablets.

## Legal Principles

- Trademark protection is not strictly limited to the precise statutory category of goods when related-goods confusion and unfair competition are shown.
- Coined, arbitrary marks that have achieved strong public identification receive broader protection against use on related products directed to overlapping consumers.
- Use of an identical mark, or a derivative corporate/product name designed to evoke the senior mark, may be enjoined where it is likely to cause confusion or enables a junior user to benefit from the senior user’s advertising and reputation.
- In assessing infringement and unfair competition, courts consider the strength of the mark, the relatedness of the goods’ purposes and consumers, and the likelihood that the junior use will create mistaken association or deception.

## Conclusion

The court affirmed injunctive relief barring use of “Kotex” and “Kotabs” for menstrual-pain tablets, holding that a well-known coined mark for sanitary pads extends to closely related menstrual products where the junior user’s adoption of identical or similar branding is likely to cause confusion or exploit the senior user’s goodwill.


Kotabs, Inc. v. Kotex Co., 50 F.2d 810 (3d Cir. 1931)