## Facts

- Johnson & Johnson’s subsidiary, McNeilab, marketed Tylenol, an acetaminophen analgesic with a long-standing, heavily advertised red-and-white trade dress and strong market share.
- Retailers and related companies marketed store-brand acetaminophen products named Actenol, Hydenol, and Supernol, competing directly with Tylenol in the same outlets and shelf space.
- Defendants asserted that plaintiffs’ product names shared a similar cadence and the “-nol” suffix with Tylenol and that plaintiffs’ packaging used similar red-and-white design elements.
- Plaintiffs sued for a declaratory judgment of non-infringement and no unfair competition; defendants counterclaimed for trademark infringement, trade-dress infringement, and unfair competition and sought an injunction.
- A consumer survey showed respondents a shelf display containing plaintiffs’ products (without Tylenol) for five seconds:
  - 17–24% reported seeing “Tylenol” even though it was not present.
  - 23% believed Actenol was made by Tylenol’s manufacturer.
  - Approximately 40% believed Tylenol’s manufacturer made Hydenol and Supernol.
- The case was tried to the court in a bench trial, with findings and conclusions issued under Rule 52.

## Issues

1. Whether plaintiffs’ use of the names Actenol, Hydenol, and Supernol and their packaging created a likelihood of confusion with the Tylenol mark and trade dress.
2. Whether plaintiffs’ marketing practices constituted unfair competition by causing source or sponsorship confusion and trading on Tylenol’s goodwill.
3. Whether defendants were entitled to injunctive relief barring continued use of the challenged names and confusingly similar trade dress.

## Decision

- The court denied plaintiffs’ request for a declaratory judgment of non-infringement.
- The court found for defendants on their counterclaims for trademark infringement, trade-dress infringement, and unfair competition.
- The court held that the similarity of the marks and packaging, in the context of direct competition and shelf proximity, was likely to confuse consumers about source, affiliation, or sponsorship.
- The court credited the consumer survey as strong evidence supporting likely (and demonstrated) consumer confusion.
- The court issued injunctive relief preventing plaintiffs from marketing acetaminophen analgesics under the infringing names and confusingly similar trade dress, as set out in the judgment.

## Legal Principles

- Trademark and trade-dress infringement turns on whether the challenged mark or packaging is likely to cause consumer confusion as to source, affiliation, sponsorship, or approval.
- A strong, well-known mark and consistent trade dress receive broader protection against similar marks and packaging in the same product category.
- Similarity is assessed by overall commercial impression, including sight and sound of product names and the total appearance of packaging (trade dress).
- Direct competition, shared marketing channels, and close physical proximity in retail settings increase the risk of confusion for low-cost consumer goods.
- Consumer survey evidence can be highly probative on likelihood of confusion, including confusion as to the presence of the senior brand and beliefs about common manufacture or sponsorship.
- Injunctive relief is an appropriate remedy when infringement and likely confusion are shown.

## Conclusion

The court concluded that Tylenol’s strong mark and distinctive red-and-white trade dress were likely to be confused with plaintiffs’ “-nol” private-label acetaminophen products and similar packaging, and it entered an injunction to stop the infringing naming and trade-dress practices.


The Kroger Co. v. Johnson & Johnson, 570 F. Supp. 1055 (S.D. Ohio 1983)