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ARTICLE · 31 OCTOBER 2005

Effective Disclaimer Required to Avoid Likelihood of Confusion

McDermott Will & Emery
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Addressing the issue of the effectiveness of disclaimers, the U.S. Court of Appeals for the Second Circuit held that a junior party could be enjoined from referring to Weight Watcher’s "Points" trademark in its packaging of frozen food unless it could prove the effectiveness of its disclaimer in avoiding a likelihood of confusion.

United StatesIntellectual Property
Terry Ahearn
Terry Ahearn
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Addressing the issue of the effectiveness of disclaimers, the U.S. Court of Appeals for the Second Circuit held that a junior party could be enjoined from referring to Weight Watcher’s "Points" trademark in its packaging of frozen food unless it could prove the effectiveness of its disclaimer in avoiding a likelihood of confusion. Weight Watchers International, Inc. v. Luigino’s, Inc., Case No. 04-4103-CV (Second Cir. Sept. 12, 2005) (Kaplan, D.J., sitting by designation).

Weight Watchers registered the marks "Points" and "Winning Points" in connection with its diet program wherein certain foods are assigned point values based on calorie and fat content. Luigino’s markets frozen meals that prominently display a point value related to the fat and calorie content of the product. Next to the word "Points" on the front of the package, Luigino’s puts an asterisk that corresponds to a disclaimer on the back of the package identifying Weight Watchers as the owner of the "Points" trademark.

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