When is a trademark deceptive advertising?

Silver Registered Sign Representing Patented BrandsNature Made is an incontestible trademark owned by supplement powerhouse Pharmavite, LLC. Nature Made is also the #1 selling “broad line” of vitamin and mineral supplements in the United States. The Nature Made brand is carried in practically every major drug store chain and supermarket from sea to shining sea, and is a popular item in “big box” and warehouse club retailers as well.

But is Nature Made made by nature? Not necessarily, says Miami lawyer and Nature Made customer Paul Bass. And so Mr. Bass, using a defunct corporation he owns called Pinecrest Consortium, Inc., is suing Pharmavite claiming they violated the Florida Deceptive Trade Practices Act by tricking him into believing that the synthetic Vitamin E he purchased under the trademark Nature Made was actually from natural sources.

Made by man, or made by nature?

As with many vitamin supplements, some found on store shelves are derived from natural sources and others are made in the laboratory. Most natural vitamins are indistinguishable from their synthetic counterparts since they have identical molecular structures.

However, the natural and synthetic forms of vitamin E are different. According to this research summary from supplement ingredient maker Cognis entitled “A Comparison of Natural and Synthetic Vitamin E,” natural vitamin E, derived from vegetable oils, is identified in supplements as d-alpha-tocopherol. Synthetic vitamin E, produced commercially by a chemical reaction of trimethylhydroquinone (TMHQ) with isophytol, is identified as dl-alpha tocopherol.

Depending on who you believe, the differences may not end there. Some studies, including the ones surveyed by Cognis, show that the bioavailability and absorbtion rates of natural forms of vitamin E is significantly higher than that of synthetic forms, and that natural vitamin E is retained longer in body tissues than the synthetic variety. However, according to the Nature Made FAQ on Vitamin E, “some studies have shown both natural and synthetic forms of vitamin E to be absorbed equally well, while other studies show that the natural form is slightly better absorbed in the body.”

Mr. Bass, however, appears to be in no mood to debate the issue. Angry that he was sold a synthetic vitamin under the Nature Made brand, he sued Pharmavite under Florida’s Little FTC Act. Lawyers for Pharmavite removed the case to Federal Court last month arguing that because Bass challenged the use of the Nature Made trademark, the matter presented a federal question arising under the Lanham Act and belonged in federal court.

“Creamo” and its progeny.

Believe it or not, the foundations for this dispute over vitamin E supplements extend to the very earliest cases on deceptive advertising. In 1919, just 5 years after the passage of the Federal Trade Commission Act, 15 USC § 41, et seq., the U.S. Supreme Court decided Brougham v. Blanton Manufacturing Co., 249 U.S. 495 (1919), and held that the use of a federally registered trademark could be a deceptive practice in violation of a consumer protection statute.

In Brougham, the Dept. of Agriculture challenged the use of the trademark “Creamo” to identify margarine that contained no cream because it “is deceptive and induces the belief that cream is a substantial ingredient of the oleomargarine.” The company contended that because the designation “Creamo” had been sanctioned as an appropriate trademark by the Patent Office (then part of the Interior Department) it could not be deceptive.

The Supreme Court disagreed.

The test of the product is the meat inspection laws, not the trade-mark laws, and therefore we are concerned with the action of the Department of Agriculture and not with that of the Interior Department. And so intimately is the case concerned with the action of the Department of Agriculture that the basic and dominant contention of the Government is that to the department is committed the power of determining the fact of the influence of the name and label of the company. In other words, the power of determining whether a trade name is “false or deceptive” given by the law to the Secretary of Agriculture is, when exercised, conclusive of the falsity or deception of the name.

Cases decided since Brougham have employed the same reasoning. Examples include the use of the term “mill” in a brand name for wheat flour where the seller of the flour was not the original grinder of the grain, N. Fluegelman & Co. v. F.T.C., 288 U.S. 212 (1933); the use of the registered mark “Satinmaid” to refer not to fabric made of silk, the yarn used traditionally in the making of satin, but to cotton, N. Fluegelman & Co. v. F.T.C., 37 F.2d 59 (2d Cir. 1930); the use of a registered mark for the greek red cross on a brand of paper towels and toilet paper, A.P.W. Paper Co. v. F.T.C., 149 F.2d 424 (2d Cir. 1945); and the use of the term “Gordon’s Detoxifier” to refer to a bizarre turbo-enema type contraption that appeared to pose more harm than good to the user’s intestines, Irwin v. F.T.C., 143 F.2d 316 (8th Cir. 1944).

Flash forward

All well and good, but in this day and age can a brand name, by itself, really be deceptive? Many still complain about labeling products that have MSG and other chemicals as “all natural.” However, consumers are way more sophisticated now than they were in the old days when the cases cited above were decided.

During a recent visit to my local CVS I examined the selection of vitamin E supplements in the Nature Made section. Both natural and synthetic products were offered. The containers with the naturally derived vitamin E were labeled “100% natural,” while the synthetic variety were not.

Notice of Removal (contains all state court filings including complaint), Pinecrest Consortium, Inc. v. Pharmavite, LLC.

About 

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

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Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

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