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The presence and prominence of markings tending to dispel confusion as to the origin, sponsorship, or approval of the goods in question is highly relevant to an inquiry concerning the similarity of the two dresses. When prominently displayed it can go far towards eliminating any possible confusion, even though the appearance of the junior user's name does not in all cases eliminate the possibility of consumer confusion.
Appellant and appellee were both major pharmaceutical companies whose products included nationally famous over-the-counter analgesics. Appellee manufactured Excedrin PM, a product that combined an analgesic and sleep aid. Its packaging remained fairly consistent. After appellee's product had been sold for more than 20 years, appellant introduced its Tylenol PM, which was also a combination analgesic/sleep aid. Appellee filed suit under § 43(a) of the Lanham Act, 15 U.S.C.S. § 1125(a). The district court entered a preliminary injunction in favor of appellee, finding that the "Tylenol PM" trade dress was likely to cause confusion among purchasers due to its similarity to Bristol's "Excedrin PM" trade dress. Appellant challenged the preliminary injunction. On cross-appeal, appellee challenged the denial of an injunction to prevent appellant from using the term "PM" on its product. On cross-appeal, appellee challenged the denial of an injunction to prevent appellant from using the term "PM" on its product.
The court identified the likelihood of confusion as to the products' origin as the key issue. After examining the two trade dresses, the court concluded that the prominence of well-known trade names on the two packages weighed heavily against a finding of consumer confusion. Accordingly, the court vacated the preliminary injunction because it held that the district court's finding on likelihood of confusion was clearly erroneous. With respect to appellee's cross-appeal, the court affirmed finding that "PM," when affixed to an analgesic trade name, was descriptive of a combination analgesic/sleep aid and that the "PM" designator had not acquired secondary meaning.