Kaye Scholer Wins Lanham Act Judgment for Office Products Client Avery Dennison

April 19, 2013

CHICAGO—A federal court entered final judgment in favor of Kaye Scholer client Avery Dennison, which had been accused, by Continental, of tortious interference with business expectation and false advertising under the Lanham Act arising because of the way it had worded its product packaging. The case was Continental Datalabel, Inc. v. Avery Dennison Corporation (Northern District of Illinois). 

Continental’s false advertising claim was premised on Avery’s Easy Peel® label boxes that read, “Only Avery offers the Pop-up Edge™ for fast peeling” (with the “TM” symbol always used to denote the term “Pop-up Edge” as a trademark). Continental argued that its own competing label products had similar functional features as Avery’s labels, so it was false and misleading for Avery to claim exclusivity to the “Pop-up Edge™.”

After more than three years of litigation, the district court granted summary judgment to Avery, holding that the accused statements were not literally false as a matter of law because it was undisputed that only Avery Dennison offered labels that carried the trademarked “Pop-up Edge™” name, and Avery’s consistent use of the “TM” in the accused statements clearly communicated that Avery was claiming exclusivity to the trademarked term, rather than to a general product feature. The Court further held that Continental had proffered no competent evidence that consumers would be misled by the accused statements use of the trademark term “Pop-up Edge™” into thinking that Avery was claiming exclusivity to a functional feature.

Continental’s tortious interference claim had asserted that Avery told prospective customers of Continental that Continental’s labels infringed a pending Avery patent application. But the Court held that Continental had not proffered any admissible evidence that any such statements were ever actually made by any Avery representative.

Continental’s motion for reconsideration of the summary judgment on the Lanham Act claim was also denied by the Court on April 19, on grounds that the motion was an attempt to raise new arguments that had been forfeited when Continental had not made them during summary judgment proceedings. The remaining claims, alleging patent infringement, had been stayed by the Court pending reexamination by the Patent Office, and were dismissed by the Court without prejudice. 

Avery was represented by Kaye Scholer Partner Robert W. Unikel, Counsel Deanna Keysor and Associate Michelle Marek, as well as Jane Shay Wald of Irell & Manella.

Launched more than 45 years ago, Kaye Scholer’s Intellectual Property Department focuses on resolving disputes, both in and out of the courtroom. With an emphasis on patent litigation suits, we combine sophisticated scientific, technical and business knowledge with extensive courtroom experience. We also defend high-stakes trademark, false advertising, and copyright lawsuits and advise companies on trade secrets protection, hearings before the PTO and Section 337 cases before the ITC. Finally, we advise on technology and outsourcing issues, working in conjunction with Kaye Scholer’s transactional teams.

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