2000 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

2-8-2000

Warner-Lambert Co. v. Breath Asure Inc.

Precedential or Non-Precedential:

Docket 98-6502

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Recommended Citation

"Warner-Lambert Co. v. Breath Asure Inc." (2000). 2000 Decisions. Paper 24.

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Filed February 8, 2000 

UNITED STATES COURT OF APPEALS 

FOR THE THIRD CIRCUIT 

No. 98-6502 

WARNER-LAMBERT COMPANY, 

 Appellant, 

v. 

BREATHASURE, INC., 

ON APPEAL FROM THE 

UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF NEW JERSEY 

Civil No.: 98-cv-01940 

District Court Judge: Honorable John W. Bissell 

Argued: May 21, 1999 

Before: McKEE, RENDELL, Circuit Judges and GARTH, 

Senior Circuit Judge 

(Filed: February 8, 2000) 

 Thomas C. Morrison, Esq. (Argued) 

 Eugene M. Gelernter, Esq. 

 Kathleen H. Dooley, Esq. 

 Shanley & Fisher, P.C. 

 Patterson, Belknap, Webb & 

 Tyler, LLP 

 1133 Avenue of the Americas 

 New York, NY 10036 

 Attorneys for Appellant 

 Joel M. Wolosky, Esq. (Argued) 

 Sharon H. Stern, Esq. 

 Parker, Chapin, Flattau & 

 Klimpl, LLP 

 1211 Avenue of the Americas 

 New York, NY 10036 

 Mark I. Peroff 

 Trademark and Patent Counselors of 

 America, P.C. 

 915 Broadway 

 New York, NY 10010 
 Attorneys for Appellee 

OPINION OF THE COURT 

McKEE, Circuit Judge. 

Warner-Lambert Company sued BreathAsure, Inc. under

S 43(a) of the Lanham Act based upon Warner-Lambert's 

belief that the trade names, "BreathAsure" and 

"BreathAsure-D," for certain of defendant's breath 

fresheners constituted a false and misleading claim that 

gave BreathAsure an unfair advantage in the sale of those 

products, and injured Warner-Lambert in the sale of its 

breath freshening products. On the third day of the ensuing 

trial, BreathAsure stipulated that scientific evidence 

established that its "BreathAsure" products were not 

effective against bad breath. As a result, the District Court 

permanently enjoined BreathAsure from continuing to

advertise that those products were effective. However, the 

court refused to enjoin use of the trade names 

"BreathAsure" or "BreathAsure-D" because the court 

concluded that Warner-Lambert had not demonstrated that 

it was likely to be harmed by the continued use of those 

product names. This appeal followed.1 For the reasons that 

follow, we will reverse. 

_________________________________________________________________ 

1. "We review the District Court's conclusions of law in a plenary 

fashion, its findings of fact under a clearly erroneous standard, and its 

decision to grant or deny an injunction for abuse of discretion." American 

Telephone & Telegraph Co. v. Winback and Conserve Program, Inc., 42 

F.3d 1421, 1427 (3d Cir. 1994), cert. denied, 514 U.S. 1103 (1995) 

(quoting Johnson & Johnson-Merck Consumer Pharmaceuticals, Inc. v. 

Rhone-Polenc Rorer Pharmaceuticals, Inc., 19 F.3d 125, 127 (3d Cir. 

1994)). 

 2 

I. 

Warner-Lambert is a leading manufacturer of several

well-known breath freshening products, including Certs, 

Clorets, Listerine, and Dentyne. Those products are in the 

form of gum, mints, and mouthwash. BreathAsure, Inc. 

also markets several breath freshening products, including 

BreathAsure and BreathAsure-D, which are the subjects of 

this dispute. BreathAsure's breath freshening products are 

capsules that are swallowed. For several years prior to this 

lawsuit, BreathAsure, heavily promoted its BreathAsure 

products as being effective against bad breath. The theme 

of much of the advertising was that the capsules worked 

effectively at the source of bad breath and were, therefore, 
superior to products that simply masked or covered bad 

breath such as gum, mints and mouthwash. One such ad 

contained a series of photographs depicting food, a couple 

appearing to share a tender moment, and a package of 

BreathAsure. The following captions appear beneath those 

images: "if you eat and we all do," "and you want to get 

close," "you need BreathAsure the internal breath 

freshener," "BreathAsure for the confidence of clean fresh 

breath." The label on the package of BreathAsure in this ad 

read: "The internal Breath Freshener All-Natural", and a 

banner across the front of the packaging proclaimed:"lasts 

& lasts & lasts." Much of defendant's advertising tells the 

reader to "stop masking bad breath" with products that 

"just cover-up bad breath." Another of defendant's 

advertisements contained an image of a woman with the 

bottom of her sweater pulled up over her navel and the 

legend: "Fight the problem at its source" with a dotted 

arrow pointing to the woman's stomach. Plaintiff's Exhibit 

101J. 

The National Advertising Division of the Better Business 

Bureau investigated defendant's advertising and concluded 

that defendant's claim that BreathAsure and BreathAsureD were effective breath fresheners was not supported by 

any reliable scientific evidence. Accordingly, it 

recommended that defendant discontinue or substantially 

modify its ads for its breath fresheners.2 App. 133, A.138- 

39, A.185, A.189. 

_________________________________________________________________ 

2. Warner-Lambert now represents without contradiction that the 

scientist whose studies defendant relied upon in opposing the National 

 3 

Based upon the unsupported claims made in advertising 

that BreathAsure and BreathAsure-D were effective breath 

fresheners, Warner-Lambert filed the instant complaint 

under S 43(a) of the Lanham Act, 15 U.S.C.S 1125(a), 

seeking to permanently enjoin BreathAsure from 

advertising that its BreathAsure products are effective 

breath fresheners. Warner-Lambert also sought a 

permanent injunction against use of the name 

"BreathAsure" based upon its contention that the name 

itself communicates a false and misleading message.

Warner-Lambert did not seek monetary damages. Despite 

BreathAsure's claims that its capsules are superior to 

products that merely mask bad breath, evidence produced 

during the instant litigation established that bad breath 

originates in the mouth, not in the stomach. Therefore, 

Warner-Lambert maintains that effective breath freshening 

products must either mask offensive oral odors, or attack 

bacteria in the mouth. A.180. 
On the third day of the bench trial on Warner-Lambert's 

complaint, BreathAsure stipulated that "[s]cientific studies 

presented in this case demonstrate that BreathAsure and 

BreathAsure-D are not effective in reducing bad breath 

. . . ." BreathAsure also consented to an injunction 

prohibiting it from advertising that its capsules were 

effective breath fresheners. However, BreathAsure 

continued to resist any injunction against the use of the 

trade names "BreathAsure" and "BreathAsure-D," and 

insisted that those names did not violate the Lanham Act. 

At the completion of the bench trial, the District Court 

issued an oral opinion in which it held that the trade 

names misrepresented the products' qualities. The court 

stated: 

 The Court determines that the name Breath Asure, 

 particularly given its contemplated future use for 

 defendant's products, is indeed deceptive and a 

_________________________________________________________________ 

Advertising Division's recommendation that the advertising be modified 

or discontinued has since disavowed his own studies insofar as they 

supported defendant's claim that an ingestible capsule could combat 

offensive breath odor. See Br. for Appellant at 9. 

 4 

 misrepresentation of the products' qualities. It implies 

 assurance where there is no basis for it. It relates to 

 breath; and, together with a residuum of past ads, 

 although discontinued, will inform the market and 

 prospective consumers that it is designed to enhance 

 breath quality and limit offensive odors. While 

 discontinuance of the ads that are the subject of the 

 consent injunction here is and will be significant, 

 particularly in terms of any likelihood of future injury 

 to the plaintiff, that residual impact will be enough to 

 generate product recognition, particularly when the 

 name Breath Asure continues to be used. 

 Said somewhat otherwise, I do not accept the 

 testimony of [defendant's main witness] that in all 

 likelihood the future use of Breath Asure, alone or in 

 connection with otherwise benign descriptions, could 

 itself lead to a multiple number of conclusions as to 

 what the product is . . . . Breath Asure's campaign over 

 the last six years has been successful in producing 

 sufficient recognition for the term Breath Asure that its 

 continued use in the market will present to the public 

 once again a product with assurance of breath quality. 

 Accordingly, Breath Asure is deceptive, advising the 
 consumer that there is a sound basis for assurance 

 that this product will freshen or destroy odors in ones 

 breath when there is inadequate support for such a 

 claim. That element of the claim remaining in this case 

 by the plaintiff has been established. 

A.13-14. 

The court also found that "[t]he [Warner-Lambert and 

BreathAsure] products are in competition in a general 

sense in the breath freshener market." App. at A-25. 

However, despite finding that defendant's claims for its 

products were misleading, the court refused to enjoin the 

use of the two trade names. The court based its refusal 

upon two cases decided by the Court of Appeals for the 

Second Circuit: Johnson & Johnson v. Carter-Wallace, 631 

F.2d 186 (2d Cir. 1994), and Ortho Pharmaceutical 

Corporation v. Cosprophar, Inc., 32 F.3d 690 (2d Cir. 1994). 

The court refused to presume injury to Warner-Lambert 

based upon defendant's deceptive product name and its 

 5 

finding that Warner-Lambert and BreathAsure were in

"competition in a general sense." Instead, the court 

concluded that Warner-Lambert had not met its burden of 

establishing the likelihood of future injury from continued 

use of the product name. The court reasoned that 

BreathAsure and BreathAsure-D 

 are in competition [with Warner-Lambert's products] in 

 a general sense in the breath freshener market. But 

 BreathAsure, in this Court's view and as established in 

 this record, I determine is essentially a niche 

 production in light of the manner in which it's 

 consumed and the problems which it is supposed to 

 address. It's in a niche essentially where the plaintiff's 

 products don't go both physically and otherwise. 

 This continues to support the Court's determination 

 that the greater likelihood of the side by side marketing 

 of BreathAsure and the plaintiff's products is that 

 consumers will, as they have in the past, add 

 BreathAsure as a compliment to the plaintiff's 

 products, not a substitute, thereby lessening any 

 injury to the plaintiff. 

A.25-6. 

The court relied upon the following in reaching its

findings: (i) sales trends for the BreathAsure products had 

decreased in recent years; (ii) Warner-Lambert's sales of 

Listerine, Certs, and Dentyne had increased; (iii) Warner- 
Lambert had not called any consumer witnesses to testify 

that they had switched from using Warner-Lambert's 

breath-freshening products to BreathAsure's products; (iv) 

Warner-Lambert had not presented consumer surveys 

indicating the future impact of BreathAsure products on 

Warner-Lambert's sales; and (v) inasmuch as BreathAsure's 

products were "niche products" that were not used in the 

same manner as Warner-Lambert's products, there was no 

basis to conclude that consumers were likely to switch 

products rather than simply use "BreathAsure" to 

supplement Warner-Lambert's products. 

On appeal, Warner-Lambert contends that the District 

Court was clearly erroneous in its findings, and that it 

 6 

erred in not satisfying the necessary burden to enjoin use 

of those trade names. 

II. 

Our analysis must necessarily begin with Section 

43(a)(1)(B) of the Lanham Act which provides in relevant 

part: 

 (a)(1) Any person who, on or in connection with any 

 goods or services . . . uses in commerce any

 word, term, name, symbol, or device, or any 

 combination thereof, or any . . . false or 

 misleading description of fact, or false or 

 misleading representation of fact, which -- 

 . . . (B) in commercial advertising or promotion, 

 misrepresents the nature, characteristics, 

 qualities, or geographic origin of his or her 

 . . . goods, services, or commercial activities, 

 shall be liable in a civil action by any person who 

 believes that he or she is or is likely to be damaged by 

 such act. 

15 U.S.C. S 1125(a)(1)(B). To establish a Lanham Act claim 

based on a false or misleading representation of a product 

the plaintiff must show: 

 1) that the defendant has made false or misleading 

 statements as to his own product [or another's]; 

 2) that there is actual deception or at least a te ndency 

 to deceive a substantial portion of the intended 

 audience; 
 3) that the deception is material in that it is li kely to 

 influence purchasing decisions; 

 4) that the advertised goods traveled in interstat e 

 commerce; and 

 5) that there is a likelihood of injury to the pla intiff in 

 terms of declining sales, loss of good will, etc. 

Johnson & Johnson-Merck Consumer Pharmaceuticals Co. v. 

Rhone-Poulenc Rorer Pharmaceuticals, Inc., 19 F.3d 125, 

 7 

129 (3d Cir. 1994)(quoting U.S. Healthcare, Inc. v. Blue 

Cross of Greater Philadelphia, 898 F.2d 914, 922-23 (3d 

Cir. 1990)). However, "[i]f a plaintiff proves a challenged 

claim is literally false, a court may grant relief without 

considering whether the buying public was misled." 

Johnson & Johnson-Merck, 19 F.3d at 129. See also Castrol, 

Inc. v. Pennzoil Co., 987 F.2d 939, 943 (3d Cir. 1992). 

In Parkway Baking Co. v. Freihofer Baking, Co., 255 F.2d 

641, 649 (3d Cir. 1958) we held that a plaintiff seeking 

damages under S 43(a) must establish customer reliance 

but need not quantify loss of sales as that goes to the 

measure of damages, not plaintiff's cause of action. 255 

F.2d at 648. Significantly for our purposes here, we also 

stated: 

 [i]n cases of injunction, however, there seems to be no 

 requirement that purchasers actually be deceived, but 

 only that the false advertisements have a tendency to 

 deceive. This seems to be the result desired by 

 Congress in that Section 43(a) confers a right of action 

 upon any person who `believes that he is or is likely to 

 be damaged' by defendant's practices. While it would 

 be going too far to read the requirement of customer 

 reliance out of this section so far as damages are 

 concerned, we believe that this is a recognition that, as 

 with most equitable relief by way of injunction, Section 

 43(a) may be asserted upon a showing of likelihood of 

 damage without awaiting the actuality. 

Parkway Baking Co., 255 F.2d at 649 (emphasis added). 

Here, Warner-Lambert first argued that the District Court 

applied the wrong standard of proof in determining if it had 

established the necessary "likelihood of injury." WarnerLambert argues that, having found that the "BreathAsure" 

product name was deceptive and that the parties' products 

compete, the District Court necessarily should have

concluded that Warner-Lambert had a reasonable basis to 
believe that it was likely to be injured if the defendant 

continued referring to its products as "BreathAsure." The 

District Court refused to infer a likelihood of injury, and 

instead required the plaintiff to present "some persuasive 

evidence" of likely damage. 

 8 

The District Court compared the proof presented by 

Warner-Lambert here with the proof presented by the

plaintiffs in Ortho and Carter-Wallace and concluded that 

Warner-Lambert's failure to produce evidence of declining 

market share, consumer surveys or evidence of consumers 

using defendant's products instead of Warner-Lambert's, 

was fatal to Warner-Lambert's claim insofar as WarnerLambert sought to enjoin defendant's use of its trade 

names. See A.22-24. The court stated: 

 [l]et us take a look at some of the methods of proof 

 employed in Johnson & Johnson.3 Now, surely they're 

 not exclusive and the mere failure of all or some of 

 them to be present in the case at bar is not itself fatal. 

 But they are indicative at least of the type of evidence 

 upon which this claim might be sustained that are 

 absent here. 

A.22. The court then referred to the consumer surveys, and 

consumer testimony that was introduced in Johnson &

Johnson v. Carter-Wallace. The court concluded,"[t]here is 

no probative, certainly not adequate probative, evidence of 

consumer surveys once again to indicate a likely damage or 

impact upon either the sales or market shares of the 

plaintiff's products by the continuation of the defendant's 

product merely aided by the trade name Breath Asure." 

A.24. 

Similarly, the court referred to Ortho as follows: 

 The Ortho case also emphasized such things as the 

 absence of market studies and direct competitive 

 advertising, and the conclusion that people would not 

 necessarily switch as opposed to merely supplementing 

 their repertoire of products. So those similarities 

 between the deficient proofs in Ortho and the 

 deficiencies of the present proofs exist. 

_________________________________________________________________ 

3. The District Court referred to Johnson & Johnson v. Carter-Wallace, 

631 F.2d 186 (2d Cir. 1980) as "Johnson & Johnson," and "J&J." 

However, we refer to it here as "Johnson & Johnson v. Carter-Wallace" or 

"Carter-Wallace" so as to distinguish it from our holding in Johnson & 

Johnson-Merck v. Rhone-Poulenc Rorer Pharmaceuticals, 19 F.3d 1125 (3d 

Cir. 1994). 
 9 

A.24-5. Inasmuch as the District Court based its analysis 

on Johnson & Johnson v. Carter-Wallace and Ortho, rather 

than our holding in Parkway Baking, we will discuss those 

two opinions of the Second Circuit Court of Appeals. We 

believe the District Court misconstrued the import of the 

analysis in both of those cases. 

In Carter-Wallace, plaintiff manufacturer of Baby Oil and 

Baby Lotion sued defendant manufacturer of "NAIR" - a 

depilatory product that was aggressively advertised as 

containing "baby oil." The District Court granted a defense 

motion to dismiss following a bench trial based upon its 

conclusion that plaintiff had failed to prove "damage or the 

likelihood of damage." 631 F.2d at 189. On appeal, the 

Court of Appeals for the Second Circuit had to decide "[j]ust 

what that burden is and what evidence will satisfy it. . . ." 

Id. The court began by analyzing the historical background 

of the Lanham Act and Congress' intent to broaden the 

scope of liability that had previously existed for commercial 

torts. The court concluded that the language of the statute 

requires, both as a matter of standing, and as an element 

of the substantive offense, that a plaintiff seeking only 

injunctive relief establish something more than a "mere 

subjective belief that he is . . . likely to be damaged," but 

that the plaintiff "need not quantify the losses actually 

borne." Id. Rather, the court reasoned that the burden 

under S 43(a) actually lay "between those two extremes." Id. 

The court's analysis was based upon the language of the 

Lanham Act, which provides a cause of action for "any 

person who believes that he or she is or is likely to be 

damaged" by the forbidden act. 15 U.S.C. S 1125(a). The 

court held that, 

 despite the use of the word `believes,' something more 

 than a plaintiff 's mere subjective belief that he is 

 injured or likely to be damaged is required before he 

 will be entitled even to injunctive relief . . . . The 

 statute demands only proof providing a reasonable 

 basis for the belief that the plaintiff is likely to be 

 damaged as a result of the false advertising. 

Carter-Wallace, 631 F.2d at 189-90. 

Thus, under Carter-Wallace, a plaintiff must prove that it 

has a reasonable basis for believing that it is likely to suffer 

 10 

injury, and that a causal nexus between the injury and the 
false name or advertisement. The court in Carter-Wallace 

concluded that the District Court had set the bar too high 

by requiring the plaintiff " `to prove the existence of some 

injury caused by' the defendant" as that demands"proof of 

actual loss and specific evidence of causation." The court 

reasoned that "[p]erhaps a competitor in an open market 

could meet this standard with proof short of quantified 

sales loss, but it is not required to do so." Id. at 190. The 

Court of Appeals concluded "[t]he correct standard is 

whether it is likely that Carter's advertising has caused or 

will cause a loss of [plaintiff's] sales, not whether [plaintiff] 

has come forward with specific evidence that [defendant's] 

ads actually resulted in some definite loss of sales." Id. 

However, in Carter-Wallace, the plaintiff was contending 

that the defendant's representation that NAIR contained 

baby oil improperly suggested that NAIR was a Johnson & 

Johnson product. Johnson & Johnson also claimed that 

the defendant's claims that NAIR could moisturize and 

soften skin was false, and that those false claims were 

impacting on the sale of Baby Oil. However, since Baby Oil 

was not a hair removal product there was an issue as to 

whether the defendant's product adversely impacted the 

sale of plaintiff 's Baby Oil. Johnson & Johnson attempted 

to address that concern by introducing consumer testimony 

to establish that users of NAIR relied upon that product's 

purported skin moisturizing qualities in refraining from 

using Baby Oil. Thus, the contest there was between a hair 

removal product with baby oil as an additive that purported 

to moisturize skin, and the manufacturer of Baby Oil - 

which was clearly not a hair removal product. That is not 

analogous to our situation because the plaintiff and 

defendant here both manufacture purported breath 

freshening products.4 

_________________________________________________________________ 

4. Moreover, the procedural posture in Carter-Wallace is different from 

that in the present case. In Carter-Wallace, the District Court had not 

yet 

considered whether defendant's advertising was false or misleading, as 

that was an issue to be resolved on remand. Instead, the District Court's 

dismissal was "granted on the ground that (Johnson) failed to carry its 

burden of proving damages or the likelihood of damage." Carter-Wallace, 

631 F.2d at 188-89. By contrast, in the instant case the District Court 

had already found BreathAsure's advertising to be misleading. 

 11 

Moreover, BreathAsure's advertisements implicitly aimed 

at Warner-Lambert's products. Although BreathAsure's ads 

never mentioned Warner-Lambert's products by name, they 

implicitly told consumers to stop "masking" bad breath with 
plaintiff 's products and start "attacking it at its source" 

with defendant's products. See Castrol, 987 F.2d at 946 

("there need not be a direct comparison to a competitor for 

a statement to be actionable under the Lanham Act"). 

Accordingly, the District Court's conclusion that consumers 

were equally as likely to adopt a belt and suspenders 

approach and use BreathAsure's products to supplement 

Warner-Lambert's is misplaced and is not supported by the 

analysis in Carter-Wallace. There, the court was careful to 

note that, although "likelihood of injury and causation will 

not be presumed, but must be demonstrated," plaintiff can 

demonstrate it with "proof providing a reasonable basis for 

the belief that the plaintiff is likely to be damaged as a 

result of the false advertising." Carter-Wallace, 631 F.2d at 

190. Thus, Carter-Wallace does not support the District 

Court's refusal to enjoin use of the product name. 

Similarly, we do not think the District Court's analysis is 

supported by the decision in Ortho. There, the plaintiff 

manufactured two products designed to relieve the effects 

of sun-induced aging of human skin, and plaintiff sued to 

enjoin defendant from advertising that the defendant's 

products had an "anti-aging effect." Plaintiff 's products 

were prescription drugs, and defendant manufactured overthe-counter cosmetics. Following a bench trial, the District 

Court granted defendant's motion to dismiss based upon 

the court's conclusion that the plaintiff lacked standing 

under the Lanham Act. The court held that plaintiff had not 

established a protectable interest in the ingredients of those 

of its own products that were purportedly threatened by 

defendant's products. Thus, plaintiff had not established 

that defendant's advertising was likely to cause injury. See 

Ortho, 32 F.3d at 693. The Court of Appeals for the Second 

Circuit affirmed stating: 

 We hold that since [plaintiff's] products are not 

 obviously in competition with [defendant's] [plaintiff] 

 was required to submit proof demonstrating that 

 consumers view [defendant's] cosmetics as a 

 12 

 comparable substitute for [plaintiff's] drugs. Because 

 [plaintiff] failed to do so . . . we affirm the judgment of 

 the District Court. 

Id. at 692. It was in that context that the court explained 

that a plaintiff 's subjective belief of injury was not 

sufficient to confer standing under the statute. However, 

the court also explained that the plaintiff need not establish 

direct competition or lost sales. The court also stated: 

 "[t]he likelihood of injury and causation will not be 
 presumed, but must be demonstrated in some 

 manner." The type and quantity of proof required to 

 show injury and causation has varied from one case to 

 another depending on the particular circumstances. On 

 the whole, we have tended to require a more 

 substantial showing where the plaintiff's products are 

 not obviously in competition with defendant's products, 

 or the defendant's advertisements do not draw direct 

 comparisons between the two. 

Id. at 694 (internal citations omitted). Since defendant's 

over-the-counter cosmetics were not in direct competition 

with plaintiff 's prescription drugs, the court concluded that 

plaintiff 's subjective belief of injury was not sufficient for 

standing purposes because there was no evidence that 

consumers would view defendant's cosmetics as a 

substitute for plaintiff's prescription drugs. The court 

concluded, "[t]he missing link in [plaintiff's] proof is 

evidence that [defendant's] advertising will have the effect 

on consumers that [plaintiff] says it will -- in other words, 

that consumers will see [defendant's] cosmetics as 

substitutes for [plaintiff 's] drugs. In other cases, this link 

has been supplied by consumer surveys or consumer 

witnesses." Id. at 695. "Without such proof, it would be just 

as reasonable to believe that consumers who buy 

[defendant's] products will also buy [plaintiff's] drugs or, 

alternatively, that the type of consumer who buys 

[defendant's] over-the-counter cosmetics is not the type who 

would seek out a prescription drug." Id. at 697. The District 

Court here found this language in Ortho persuasive in 

concluding that Warner-Lambert had to come forward with 

similar evidence to establish that BreathAsure products 

 13 

competed with its products and did not merely supplement 

them. 

The District Court synthesized the holdings of CarterWallace and Ortho as follows: 

 How then in a nutshell do the rulings and principles of 

 such cases as J&J and Ortho become translated into a 

 standard or analysis to be applied to the case at bar? 

 The Court determines that in this matter the plaintiff 

 was required to show by at least some persuasive 

 evidence that Breath Asure alone in the future, even 

 with the residual impact of prior ads to some extent, 

 will likely damage or injure the plaintiff in the breath 

 freshener market. And as mentioned before, the 

 plaintiff has not carried that burden. 

A.22. However, as noted above, Ortho's discussion of 
consumer surveys was in the context of an inquiry into 

whether plaintiff had standing to sue under S 43(a). The 

standing inquiry was necessary because defendant's 

products and the plaintiff 's products were not in obvious 

competition in the marketplace. 

Moreover, Parkway Baking establishes the standard for 

the present appeal inasmuch as Warner-Lambert sought 

only an injunction. As noted above, Carter-Wallace is 

distinguishable from the instant litigation. However, the 

analysis there is consistent with Parkway Baking insofar as 

it applies to our inquiry. In Carter-Wallace the Court of 

Appeals stated: "the statute demands only proof providing 

a reasonable basis for the belief that the plaintiff is likely to 

be damaged as a result of the false advertising." CarterWallace, 631 F.2d at 190. 

A showing of a reasonable belief of injury will usually be 

sufficient to establish a reasonable likelihood of injury 

under S 43(a). Clearly, if a plaintiff can not establish that its 

subjective belief of future injury from the challenged 

conduct is reasonable, plaintiff can hardly claim to have 

shown a reasonable likelihood of injury. There must be 

some basis for the subjective belief in order to establish the 

reasonableness of that belief, and that basis will usually 

 14 

equate with a showing of reasonable likelihood of future 

harm under the statute.5 

It is uncontested that BreathAsure's claim regarding the 

efficacy of its ingestible capsules is without any scientific 

foundation. The District Court correctly concluded that 

claim was a deceptive misrepresentation that "implies 

assurance where there is no basis for it." A.13. The 

permanent injunction that the District Court entered states 

in part that: "Defendant BreathAsure, Inc. is permanently 

enjoined from claiming, either directly or by implication, . . . 

with respect to BreathAsure or BreathAsure-D . . . that . . . 

it works. . . " (emphasis added). A.1. It did so because 

defendant's claims of breath assurance were literally false. 

Castrol, 987 F.2d at 944. ("If a defendant's claim is untrue, 

it must be deemed literally false"). The court also concluded 

that BreathAsure's breath freshener does compete with 

Warner-Lambert's breath fresheners "in general." That 

should have been sufficient to enjoin use of the misleading 

trade names under S 43(A), and the District Court should 

not have required Warner-Lambert to produce the kind of 

consumer surveys required in Carter-Wallace and Ortho. 

See Johnson & Johnson v. Rhone-Poulenc Rorer, 19 F.3d 

125 (3d Cir. 1994). In Rhone-Poulenc we stated: 
 If a plaintiff proves a challenged claim is literally false, 

 a court may grant relief without considering whether 

 the buying public was mislead . . . . If a plaintiff does 

 not prove the claim is literally false, he must prove that 

 it is deceptive or misleading, which depends on the 

 message that is conveyed to consumers . . . . Public 

 reaction is the measure of a commercial's impact . .. 

_________________________________________________________________ 

5. We need not now decide if a reasonable belief will always equate with 

a reasonable likelihood of injury as it is clear that, under the 

circumstances before us now, Warner-Lambert established the 

reasonableness of its belief of future injury if defendant continued to be 

able to represent, through the use of its name, that its products provided 

purchasers with some assurance of fresher breath. The circumstances 

that establish the reasonableness of that belief also establish the 

likelihood of future harm from the defendant continuing to use its name, 

thereby representing its products as effective breath fresheners in the 

"side by side marketing of BreathAsure and the plaintiff 's products. . . 

" 

Dist. Ct. at A.26. 

 15 

 the success of the claim usually turns on the 

 persuasiveness of a consumer survey. The factfinder 

 must determine whether the public was, in fact, 

 misled. 

19 F.3d at 129. 

In Sandoz Pharmaceuticals v. Richardson-Vicks, Inc., 902 

F.2d 222, 227 (3d Cir. 1990) we explained that a plaintiff 

under the Lanham Act need not establish that a 

competitor's claims are false or misleading when that is 

apparent from the advertising itself. Here, the District 

Court required Warner-Lambert to introduce the same kind 

of evidence that would have been required if BreathAsure's 

claims were not literally false. However, inasmuch as 

BreathAsure's claim that its capsules could assure fresh 

breath was literally false, Warner-Lambert did not have to 

introduce consumer testimony, marketing surveys or proof 

of lost profits to enjoin use of the BreathAsure trade name. 

As noted above, the District Court found that 

BreathAsure and Warner-Lambert "are in competition in a 

general sense in the breath freshener market." A.25. 

However, the court then seemed to eviscerate thatfinding 

by also concluding that BreathAsure was a "niche product" 

that was as likely to be used to compliment or supplement 

Warner-Lambert's products as to replace them. However, 

we do not interpret the District Court's conclusion that 
BreathAsure products are "niche products" as afinding 

that those products do not compete with other breathfreshening products.6 Rather, we conclude that the District 

Court correctly found that the parties' products do compete 

inasmuch as both are promoted as breath fresheners; the 

Warner-Lambert and BreathAsure products appear in close 

proximity to each other in stores; and BreathAsure's own 

advertisements implicitly promoted BreathAsure as a

superior alternative to Warner-Lambert's products. 

We also conclude that the District Court's finding that 

the BreathAsure product name is "deceptive and a 

misrepresentation of the products' qualities" was not clearly 

_________________________________________________________________ 

6. Indeed, the court here noted that plaintiff 's breath fresheners and 

defendant's are marketed "side by side." See A.26. 

 16 

erroneous. The District Court recognized that the 

defendant's deceptive ads were likely to injure WarnerLambert and properly enjoined defendant from continuing 

to claim that its products were effective. The District Court, 

as previously noted, enjoined the defendant from making 

those claims "either directly or by implication." However, 

the court then embroidered a loop hole into the fabric of the 

injunction by allowing the defendant to continue to refer to 

its products as "BreathAsure." 

Inasmuch as the defendant's products compete with 

plaintiff 's products we can not reconcile the District Court's 

finding that the advertisements were likely to injure 

Warner-Lambert with that court's concomitant refusal to 

enjoin use of these deceptive trade names based upon a 

belief that Warner-Lambert had not shown a reasonable 

likelihood of injury from their continued use. Under 

Parkway Baking, there "seems to be no requirement that 

purchasers actually be deceived, but only that the false 

advertisements have a tendency to deceive." 255 F.2d at 

649. That tendency is evident here. Indeed, it is surely not 

coincidence that defendant selected trade names suggesting 

that those who use the products have assurance of fresh 

breath. 

Warner-Lambert demonstrated a reasonable likelihood of 

injury from the advertising that conveyed BreathAsure's 

message, and Warner-Lambert's belief that it would be 

harmed if the defendant continued to refer to its products 

as "BreathAsure" is just as reasonable. The name falsely 

tells the consumer that he or she has assurance of fresher 

breath when ingesting one of the defendant's capsules. 

That is not true. We therefore hold that the District Court 
erred in concluding that the plaintiff failed to establish the 

likelihood of injury necessary to enjoin use of BreathAsure's 

trade names, and that the District Court abused its

discretion in refusing to enjoin use of those names. 

III. 

Accordingly, we will reverse the order of the District 

Court insofar as it denies Warner-Lambert's request to 

enjoin defendant from using "BreathAsure" or 

 17 

"BreathAsure-D" or any similarly misleading trade name, 

and remand for the District Court to enter order consistent 

with this opinion. 

A True Copy: 

Teste: 

 Clerk of the United States Court of Appeals 

 for the Third Circuit 

 18