McCormick sues over similar grinder

May 02, 2007|By June Arney | June Arney,Sun reporter

McCormick & Co.'s pre-filled spice and seasoning grinders have proved so popular with consumers that the Sparks spice maker has sold enough in four years to put one in more than half of American households.

That's $63.5 million in sales - enough that when McCormick management noticed one of its suppliers selling what they considered a knockoff earlier this year, they didn't like it. Their request to the supplier to stop was rejected, according to legal papers.

The dispute landed in federal court this week in a lawsuit in which McCormick accuses Weatherchem Corp., a manufacturer and marketer of plastic dispensing closures based in Twinsburg, Ohio, of trademark infringement.

The lawsuit, filed in U.S. District Court in Baltimore, alleges that Weatherchem marketed the grinder as having the "same packaging shape as brand leaders," and the "same non-refillable package format as brand leaders."

Since McCormick, founded in Baltimore in 1889, is the world's largest spice company, the reference to a "brand leader" could only refer to McCormick, according to the lawsuit.

"Weatherchem thus was promoting its Weatherchem Grinder as one that consumers would confuse with the McCormick Grinder," according to the lawsuit.

A spokesman for Weatherchem declined to comment yesterday.

McCormick also declined to comment, and the attorney representing McCormick did not return phone calls.

In its lawsuit, the spice company asks the court to stop Weatherchem and its agents from using, selling or promoting the Weatherchem grinder. It also asks for the destruction of molds for the grinders, along with advertisements and promotions for them and for attorneys' fees and costs.

The grinders have been a success for McCormick - it now offers seven varieties - but account for just a fraction of overall sales: $21.5 million last year out of a total of $2.7 billion.

"They're good at innovating and staying relevant to the consumer," said Matt Arnold, a St. Louis-based analyst who follows McCormick for Edward Jones.

"It's the name of the game if you're any kind of packaged food company. When it comes to brands and products, you have to protect your innovation."

Robin Teskin, an intellectual property attorney with Hunton & Williams in Washington, said McCormick has reason to act.

"Assuming the customer is legitimately confused, they could very easily lose sales," she said. "Certainly you have to balance the cost of the litigation with the possible loss of market share."

Max S. Oppenheimer, a law professor at the University of Baltimore, said McCormick would need to show that the design of the rival product mimicked its own. "Trademark law is designed to protect consumers," Oppenheimer said. "It's so when you walk into a store and you see something that looks like a McCormick spice bottle, it really is. What's at issue here is, what does the consumer associate with McCormick?"

Baltimore's Black & Decker Corp. saw copycats try to cash in during the 1990s on what was then its most successful product - a flexible flashlight called the SnakeLight.

The company promptly filed more than a dozen lawsuits.

"Unfortunately, it's not uncommon for companies to knock off successful products," said Raymond P. Niro Jr., a Chicago-based attorney whose firm represented Black & Decker. "It's easy for the knockoff artists to just sit back and wait for the successful products because they don't have to spend money on development and take the risk of products that are not going to be successful."

Niro said it took two jury trials and several hearings across the country to defend Black & Decker's SnakeLight. Niro said Black & Decker won both cases.

A patent-infringement lawsuit typically costs $3 million to $5 million to take through trial, he said. A trademark case like McCormick's could cost slightly less, he estimated.

june.arney@baltsun.com

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