Pryor Cashman Obtains Summary Judgment for CVS Pharmacy, Inc. and Pharma Pac, LLC in Trademark Action Involving “Bacitraycin Plus” and "Bacitracin + Pain Relief"
U.S. District Court Judge Arthur Spatt of the U.S. District Court for the Eastern District of New York has granted Pryor Cashman clients CVS Pharmacy, Inc. (“CVS”) and Pharma Pac, LLC (“Pharma Pac”) summary judgment dismissing in their entirety the trademark and unfair competition claims brought against them by plaintiff First Aid Research Corporation (“FARC”) relating to FARC’s trademark “Bacitraycin Plus.”
In 2008, CVS, which had been selling Bacitracin products for decades, commenced selling a new CVS/pharmacy brand product known as “Bacitracin + Pain Relief.” In naming the product, CVS followed its customary practice of using the symbol “+” to describe the product’s ingredients, i.e., bacitracin and lidocaine, a pain reliever.
In its Complaint, FARC, which owns the registered trademark “Bacitraycin Plus” for antibiotic ointments, alleged that the sale by CVS in 2008-09 of the product “Bacitracin + Pain Relief” (manufactured by Pharma Pac) constituted: (a) trademark infringement pursuant to 15 U.S.C. §1114; (b) federal unfair competition pursuant to 15 U.S.C. §1125(a); (c) a deceptive business practice in violation of N.Y. General Business Law §349; and (d) infringement pursuant to New York State common law, trademark law and unfair competition laws.
CVS and Pharma Pac moved for summary judgment dismissing FARC’s Complaint in its entirety. In granting the motion, Judge Spatt found that there was no likelihood of confusion between “Bacitraycin Plus” and “Bacitracin + Pain Relief” and that a balancing of the Polaroid factors overwhelmingly favored defendants. The Court also found that any possible confusion as to the source of Defendants’ product was eliminated by their use of the famous “CVS/pharmacy” house mark on the product's packaging.
As an alternative ground for granting summary judgment to CVS and Pharma Pac, Judge Spatt found that their use of “Bacitracin + Pain Relief” was a fair use. The name of their product, “Bacitracin + Pain Relief,” was adopted in good faith and described precisely what the product offered, i.e., Bacitracin and the pain reliever Lidocaine. Pursuant to 15 U.S.C. §1115(b)(4), such use was a “fair use” and, as a matter of law, could not be found to have infringed FARC’s trademark.
Representing CVS and Pharma Pac in the litigation and on the successful summary judgment motion was Litigation Partner Philip R. Hoffman, with assistance from summer associate Andrew Goldsmith.
To read a copy of Judge Spatt’s March 10, 2012 decision, which also denied FARC’s cross-motion for summary judgment, please click here.
