## Facts

- Procter & Gamble Co. (P&G) owned and used the mark **SURE** on a commercially successful antiperspirant deodorant, and also placed **SURE** (tampons) and **ASSURE** (shampoo and mouthwash) into a “minor brands” program.
- Under the minor brands program, P&G shipped very small quantities of products primarily to maintain registrations and avoid abandonment, with total revenues of about **$874.70** (SURE tampons), **$491.30** (ASSURE shampoo), and **$161.50** (ASSURE mouthwash).
- During the same period, P&G introduced new tampons, shampoos, and mouthwashes under different brand names rather than commercially developing SURE or ASSURE for those goods.
- Johnson & Johnson, Inc. (J&J), through its subsidiary Personal Products Company, introduced **ASSURE!** as a tampon brand and **SURE & NATURAL** as an external menstrual-protection shield brand.
- P&G sued under the Lanham Act and related state law for trademark infringement, false designation of origin, unfair competition, and dilution, seeking damages and an injunction against J&J’s use of ASSURE! and SURE & NATURAL.
- J&J denied liability and counterclaimed to cancel P&G’s registrations for **SURE** (tampons) and **ASSURE** (shampoo and mouthwash).
- After a bench trial, the court entered judgment for J&J and ordered cancellation of the challenged P&G registrations tied to the minor brands program.

## Issues

1. Whether P&G’s minimal “minor brands” distribution constituted **bona fide use in commerce** sufficient to create or maintain trademark rights in **SURE** for tampons and **ASSURE** for shampoo and mouthwash.
2. Whether J&J’s use of **ASSURE!** for tampons and **SURE & NATURAL** for menstrual shields created a **likelihood of confusion** with any protectable P&G marks.
3. Whether P&G could prevail on related claims for **false designation of origin**, **unfair competition**, and **dilution**, and whether P&G’s registrations should be **cancelled** for lack of valid use.

## Decision

- The court held P&G’s minor brands program did **not** establish or preserve enforceable rights in **SURE** for tampons or **ASSURE** for shampoo and mouthwash because the use was not bona fide commercial use.
- The court found **no likelihood of confusion** between J&J’s **ASSURE!** tampon and P&G’s limited ASSURE shampoo/mouthwash use, or between **SURE & NATURAL** and P&G’s SURE deodorant or nominal SURE tampon use.
- P&G’s Lanham Act and state-law claims for infringement, false designation, unfair competition, and dilution were dismissed.
- On J&J’s counterclaims, the court ordered **cancellation** of P&G’s relevant registrations associated with the non-bona fide minor brands use.
- The court’s equitable assessment favored J&J, given J&J’s substantial product investment and P&G’s minimal commercial stake in the disputed goods.

## Legal Principles

- Trademark rights require **bona fide use in commerce in the ordinary course of trade**; token or sham sales made primarily to reserve a mark or avoid abandonment are insufficient.
- A mark’s **strength** affects the scope of protection; common or borderline descriptive terms (such as “SURE” in performance-related contexts) receive narrower protection.
- Likelihood of confusion turns on multiple factors, including similarity of marks, proximity of goods, market context, evidence of actual confusion, and the defendant’s intent; weak marks and limited market presence reduce confusion risk.
- Where a registrant lacks valid use in commerce for the registered goods, registrations may be **cancelled**.

## Conclusion

The court ruled that P&G’s nominal “minor brands” sales did not constitute bona fide use in commerce, found no likelihood of confusion from J&J’s menstrual-product branding, dismissed P&G’s Lanham Act and related claims, and cancelled P&G’s registrations tied to the noncommercial mark warehousing program.


Procter & Gamble Co. v. Johnson & Johnson, Inc., 485 F. Supp. 1185 (S.D.N.Y. 1980)