SC Johnson & Sons, Inc., through the National Advertising Division (”NAD”), challenged Colgate-Palmolive’s recent claims pertaining to Murphy Soft-Wipes pre-moistened dust cloths. Among the claims SC Johnson found questionable were those found in a newspaper FSI, stating the product:

SC Johnson, a Colgate-Palmolive competitor, asserted that the claims made in the advertising and on the product packaging were false, misleading, and unsubstantiated, and requested substantiation of the claim that the Soft-Wipes actually repelled dust. In response, Colgate-Palmolive provided NAD with proprietary evidence showing that the Soft-Wipes comtained anti-static agents that, when applied to a surface, created electrical charges that repelled dust.

Because SC Johson was not allowed to view the actual claims (Colgate-Palmolive released them only to NAD, claiming trade secret in the results), it tested the product in its own laboratories and provided those non-proprietary results to NAD. The SC Johnson results show that there was no difference in the dust collection rate of surfaces cleaned with a regular dust product and surfaces cleaned with a Soft-Wipe.

In reviewing the evidence from both parties, NAD found that in fact, Colgate-Palmolive had not met its burden of showing that there was a reasonable basis for claiming that the Soft-Wipes actively repelled dust. Colgate-Palmolive issued a statement vehemently disagreeing with the findings of NAD. Nonetheless, it has relaunched the product with a new advertising campaign, pending new test results.

Practice Pointer: Under Section 5 of the FTC Act, the advertiser has the initial burden of presenting a reasonable basis for its claims. While a “reasonable basis” can amount to internal laboratory testing of a premise, standard practice is to have tests conducted by an independent laboratory.

Notwithstanding a gallant fight from Reed Elsevier Properties, Inc. at the Trademark Trial and Appeal Board (”TTAB”), the TTAB judges found the mark lawyers.com, for a website providing access to an online interactive database featuring information exchange in the field of law, to be generic. In a decision that has left many trademark attorneys scratching their heads, the TTAB reasoned that the public would readily identify a site bearing the name lawyers.com with a site containing information about lawyers and the law, and accordingly, the trademark was generic.

In fact, the site does contain information about lawyers. It does not, however, contain actual lawyers, nor does it give users the ability to talk to a lawyer through the site (except on special occasions). The site also contains information about cases, legal topics, and legal tips. While most would have no quibble with the suggestion that a site called lawyers.com is dedicated to lawyers and the law, longstanding trademark law suggests that generic refusals of trademarks are reserved for terms that represent the exact definition of what’s offered (a site called poetry.com, that featured actual poetry). Indeed, in this case, it appears that the mark lawyers.com is descriptive rather than generic, since it describes an element of the site, rather than the site itself.