IP Law Daily, TRADEMARK—D. Minn.: Pedialyte manufacturer alleges infringement claims against rival Revitalyte, (Aug 14, 2024)

By Steven D. Cole, J.D.

The maker of the popular children’s ready-to-drink oral electrolyte solution sufficiently alleged that a competitor unlawfully infringed upon its trade dress and trademark, using Pedialyte’s well-known brand to endorse its own product, which is targeted primarily to adults.

A federal district court in Minnesota denied Revitalyte LLC’s (Revitalyte) motion for judgment on the pleadings, finding that Abbott Laboratories (Abbott) plausibly alleged each of the five claims asserted in its complaint. Abbott, maker of Pedialyte, brought claims for trade dress infringement; trademark infringement; unfair competition, false designation of origin, and false advertising; trademark and trade dress dilution by tarnishment; and violations of the Minnesota Deceptive Trade Practices Act (MDTPA). Abbott presented sufficient examples of Revitalyte’s deceptive practices to support these allegations (Abbott Laboratories v. Revitalyte LLC, No. 0:23-cv-01449-DWF-DTS (D. Minn. Aug. 13, 2024)).

Allegations and motion. Abbott’s Pedialyte product comprises roughly 60 percent of the sales for ready-to-drink oral electrolyte solution (OES) in the United States. Research indicates that in 2021, 5.8 percent of U.S. households purchased at least one Pedialyte-branded product. Pedialyte is marketed as an affordable treatment for mild to moderate dehydration, especially for children. Abbott has sold Pedialyte in roughly the same trade dress since the 1980s, which includes “its uniquely shaped plastic bottle, with a wrap-around label encircling the middle 50-60 percent of the bottle.” Revitalyte entered the OES market in 2017 as a competitor to Pedialyte, using similarly shaped bottles and labeling, and offering some of the same flavors. According to Abbott, Revitalyte has used Pedialyte’s trademark to promote its product, implying through various media avenues that Revitalyte’s product was an “adult version” of Pedialyte. Following the initial stages of this suit, Revitalyte filed a motion for judgment on the pleadings, seeking dismissal of all five claims. The court denied this motion in full.

Trade dress infringement. Abbott plausibly alleged its claim of trade dress infringement under 15 U.S.C. § 1125(a)(1). Revitalyte argued that Abbott did not plead sufficient facts to support the claim’s nonfunctionality element, citing an expired utility patent acquired by Abbott in 1993 as evidence that Pedialyte’s trade dress was, in fact, functional. The purpose of this patent was to reduce problems associated with the sterilization of plastic bottles. However, improvements in manufacturing since this time have eliminated the need for specialized packaging designs, rendering the bottle shape no longer functional for this purpose. As evidence of this, Abbott alleged that modern manufacturing methods now allow manufacturers to sell OES products in virtually any bottle shape, and that Abbott itself packages Pedialyte in differently sized and shaped bottles in other markets outside the country.

Trade dress dilution. Abbott proffered sufficient facts to plausibly support its claim for trade dress dilution under 15 U.S.C. § 1125(c). Revitalyte argued that Abbott had not done enough to separate the fame of the Pedialyte mark from Pedialyte’s trade dress. The court disagreed, citing the exceedingly large amount, volume, and geographic extent of Pedialyte’s sales, the fact that Pedialyte has used substantially the same trade dress since the 1980s, as well as Abbott’s allegations highlighting the money that Abbott has spent on advertising not just the Pedialyte trademark, but also its trade dress. Furthermore, Revitalyte’s own 2021 Promotional Guide acknowledged Pedialyte’s recognizable trade dress by noting that Revitalyte “leverages its resemblance to Pedialyte to catch the consumer[’]s eye.”

Trademark infringement and false designation. Abbott’s allegations plausibly gave rise to a violation of 15 U.S.C. § 1125 for consumer confusion as to the origin or sponsorship of Revitalyte’s OES product. Revitalyte contended that its use of the “Compare to Pedialyte” language on its labeling was nominative fair use and that the other allegations of infringement and examples of actual confusion were de minimis. However, Abbott provided numerous examples of actual consumer confusion, and that Revitalyte responded not by dispelling the confusion; rather, it endorsed its association with Pedialyte. For example, Revitalyte retweeted various social media posts referring to Revitalyte’s OES product as “the adult version of Pedialyte,” “like Pedialyte but for adults,” and “#revitalyte by @pedialyte.” In other words, Abbott sufficiently alleged that Revitalyte “reinforced the false impression that its OES is a version of Pedialyte, rather than a competitor.

Trademark dilution. Abbott put forth a plausible claim of trademark dilution by tarnishment under 15 U.S.C. § 1125(c). Abbott cited instances in which Revitalyte used the Pedialyte mark to market its product in a way that harmed the reputation of Pedialyte’s mark. Notably, Revitalyte marketed its OES product as a hangover cure, with Revitalyte’s advertisements featuring references to heavy drinking by young adults, encouraging excessive consumption of alcohol, and often featuring other conduct that could be described as vulgar and crass, including the use of expletives and suggestive placement of the product. The company’s 2021 Promotional Guide listed “College Partiers” as one of its target demographics.

MDTPA claims. Because the court did not dismiss Abbott’s federal claims, the claims brought under the MDTPA also survived Revitalyte’s motion.

The Case is No. 0:23-cv-01449-DWF-DTS.

Judge: Frank, D.

Attorneys: Caroline Marsili (Carlson Caspers PA) and Jane Metcalf (Patterson Belknap Webb & Tyler LLP) for Abbott Laboratories. Mary Hallerman (Snell & Wilmer L.L.P.) and Stephanie M. Laws (Maslon LLP) for Revitalyte LLC.

Companies: Abbott Laboratories; Revitalyte LLC

Cases: Trademark MinnesotaNews