Nabisco, Inc. v. PF Brands, Inc.

United States District Court for the Southern District of New York · Property

PropertyTrademarkDilutionTrade DressUnfair CompetitionPreliminary InjunctionLanham ActFTDA

Facts

Pepperidge Farm has sold Goldfish crackers for decades and owns a registered, incontestable configuration trademark in the goldfish-shaped cracker. Nabisco developed a CatDog cheese-cracker mix tied to the Nickelodeon cartoon, consisting of CatDog, bone, and fish shapes, with fish making up 25% of the mix. Pepperidge Farm claimed that Nabisco's use of a goldfish-shaped cracker would dilute the famous Goldfish mark and also cause post-sale confusion. Nabisco argued that the fish shape was chosen to reflect themes from the cartoon and to reduce product breakage, not to copy Pepperidge Farm.

Issue

Whether Pepperidge Farm was entitled to a preliminary injunction on the ground that Nabisco's use of a fish-shaped cracker in its CatDog product likely diluted Pepperidge Farm's famous Goldfish configuration mark, and whether Pepperidge Farm also showed likely trademark infringement or unfair competition. More specifically, the court had to decide whether the Goldfish shape was protectable and famous, and whether Nabisco's product likely caused blurring.

Rule

To obtain a preliminary injunction, the movant must show irreparable harm and either likelihood of success on the merits or sufficiently serious questions going to the merits plus a balance of hardships tipping decidedly in its favor. For dilution under New York law, the owner must show a distinctive mark and a likelihood of dilution, which may be shown by blurring or tarnishment; in assessing blurring, the court applies the six Mead Data factors: similarity of the marks, similarity of the products, sophistication of consumers, predatory intent, renown of the senior mark, and renown of the junior mark. Under the FTDA, the owner must show a famous and distinctive mark and a likelihood of dilution, with fame assessed through the statute's nonexclusive factors.

🔒

See the holding & full analysis

Create a free KwikCourt account to unlock the rest of this brief — and practice the case.

The court's holding and reasoning
Doctrine tests, pitfalls & exam hypotheticals
10 practice questions + 4 AI-graded essays on this case

Free sample · practice this case

Test yourself

One of 10 multiple-choice questions for this case. Pick an answer to see why.

For 25 years, Harbor Mill Foods has sold a turtle-shaped cheddar cracker nationwide from Denver, Colorado, and heavily advertises the turtle silhouette as its signature. A rival, Summit Ridge Snacks, plans to launch a mixed cartoon-themed cheddar snack in Phoenix, Arizona, containing a nearly identical turtle-shaped piece among other shapes. Harbor Mill seeks a preliminary injunction before launch.

Which showing best supports preliminary injunctive relief on the dilution claim?

Explanation. A preliminary injunction requires irreparable harm plus likely success on the merits or serious questions with hardships tipping decidedly in the movant’s favor. In a dilution case, a likelihood of dilution itself establishes irreparable harm. The majority opinion expressly treated dilution differently from infringement and did not require confusion for dilution claims.