Rely on a disclaimer to avoid likelihood of confusion? Fat chance. Take the Second Circuit’s decision in Weight Watchers International Inc. v. Luigino’s Inc., fresh out of the oven and full of starch, for example. I had a shot at one of the many Weight Watchers cases brought in the Southern District of New York last spring but, alas, was passed over by what I’m sure was a slim margin. (Still, I blame the avoirdupois — the cooking is extremely good where I live!) But from a quick look at this New York Law Journal report (yes, submarine required) it sounds as if they shouldn’t have tried to do it without me.

Plaintiff weight-loss services provider was granted a preliminary injunction after the district court concluded that defendant frozen food maker’s use of the term “points” was confusingly similar to plaintiff’s use of the term in connection with its diet plan. But the court declined to enjoin defendant’s use of new packaging, concluding that a “points” mark combined with a disclaimer was unlikely to confuse customers. The appellate court determined that defendant failed to establish the effectiveness of its disclaimer. Noting the district court’s conclusion that defendant’s use of “points” was likely to confuse customers into believing that plaintiff endorsed its products, the similarity of defendant’s new packaging to its original packaging, and that the new packaging’s disclaimer did not address the issue of implicit endorsement, the appellate court ruled that the court lacked a sufficient basis to conclude that the disclaimer solved the problem.

I could have told them: Logic, rationality and common sense aside, courts just don’t buy disclaimers as a tonic for likelihood of confusion. As the Second Circuit wrote in its opinion,

And while the disclaimer on the new packaging arguably dealt with the implicit claim that Weight Watchers had calculated the point values, it did not address the issue of implicit endorsement. In all the circumstances, Luigino’s did not sustain its burden, and the district court lacked a sufficient basis to conclude that the disclaimer solved the problem

They hardly ever do. And, as demonstrated here, when they do do… the Circuits will spin ’em right back around. Call it binge and purge, if you like.

By Ron Coleman

I write this blog.