On May 13, 2015, in Conopco, Inc. v. Wells Enterprises, Inc., the Southern District of New York denied a motion to dismiss a claim for false advertising which arose from a claim that an ice-pop product was “original.”  Wells Enterprises, Inc. (“Wells”) is the largest privately held, family owned ice cream and frozen treat manufacturer in the United States. Wells is famous for producing ice cream under the brand “Blue Bunny” and is also known for its “Bomb Pop” product.

The Bomb Pop was the first red, white and blue rocket shaped frozen ice pop sold in the United States. Wells has consistently marketed the Bomb Pop as “the original Bomb Pop” and uses the phrase “the original” prominently in its packaging. Wells also holds nine trademark registrations for the name and elements of the design of the Bomb Pop.

Conopco, Inc. d/b/a Unilever (“Unilever”) sells a rocket ice pop under the brand name “Firecracker.

The Firecracker was introduced 30 years after the Bomb Pop and resembles the Bomb Pop in its design.

On March 28, 2014 Unilever filed a complaint against Wells for trademark infringement, false designation or origin, false advertising, unfair competition, deceptive trade practices and injury to business reputation under New York state law. Unilever asserted that the packaging for Bomb Pop was confusingly similar to the trade dress for the Firecracker products.

On May 22, 2014 Wells filed an answer and asserted counterclaims against Unilever for false advertising, trademark infringement and related state law claims. Wells alleged that Unilever engaged in false advertising by modifying its packaging to prominently feature the phrase “The Original” for its Firecracker product since the Bomb Pop was the first red, white, and blue shaped frozen ice treat. Unilever moved to dismiss the counterclaims.

The court granted in part and denied in part the motion to dismiss. With respect to the false advertising claim, Unilever argued that there was no falsity because the word “original” on the Firecracker’s packaging would be read literally, and clearly and truthfully indicated only that the product was the original Firecracker. The court rejected that argument. Although manufacturers often use the term “original,” it is usually done to distinguish between different versions of a manufacturer’s product, identifying for consumers that the “original” version is different from a “diet” or “baked” version. However, the record showed that the “original firecracker” was the only Firecracker product that exists, which suggested that the term “original” was intended to differentiate the “original Firecracker” from other rocket ice pops rather than from other varieties of Firecracker.  The court’s conclusion was also supported by the fact that Unilever used the term “original” elsewhere on the Firecracker’s packaging to indicate that the Unilever “Popsicle” is “the original brand” of ice pop, the first of the type of the product. Thus, Unilever’s branding of the Firecracker as “the original Firecracker” on its packaging may imply that the Firecracker is the first rocket ice pop and Wells had sufficiently alleged a claim for false advertising.

The court also found that Wells had sufficiently alleged materiality.  Materiality is generally a question of fact poorly suited to a determination at the pleadings stage.  However,  Unilever’s decision to highlight the word “original” on its packaging, at the forefront of the box and as the largest word other than the product’s name, suggested the relative importance (and hence materiality) of the claim to originality in its marketing of rocket ice pops. Also, given that very little distinguishes one rocket ice pop from another, it was plausible that a claim of originality could be important to a consumer.

The court granted Unilever’s motion to dismiss with respect to Wells’ claims for violation of New York’s consumer protection statutes. Those statutes are aimed at harm to consumers.  The harm arising from consumers potentially being misled about the nature of Unilever’s product was insufficient to show harm to the public at large. The court also dismissed Wells’ claims for trademark infringement and common law unfair competition since Wells failed to pled consumer confusion.

It is always risky to confront a competitor’s advertising.  When you choose to do that, make sure your own advertisements also pass factual muster.