McNEIL NUTRITIONALS, LLC v. Heartland Sweeteners, LLC

PRECEDENTIAL
UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
No. 07-2644
McNEIL NUTRITIONALS, LLC,
Appellant
v.
HEARTLAND SWEETENERS, LLC;
HEARTLAND PACKAGING CORP.
On Appeal from the United States District Court
for the Eastern District of Pennsylvania
(D.C. No. 06-cv-05336)
District Judge: Honorable John R. Padova
Argued October 24, 2007
Before: FISHER, STAPLETON and
COWEN, Circuit Judges.
(Filed: December 24, 2007)

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Steven A. Zalesin (Argued)
Karla G. Sanchez
David G. Sewell
Patterson, Belknap, Webb & Tyler
1133 Avenue of the Americas
New York, NY 10036
Alfred W. Putnam, Jr.
Andrea L. D’Ambra
Drinker, Biddle & Reath
18th & Cherry Streets
One Logan Square
Philadelphia, PA 19103
Attorneys for Appellant
Lizanne V. Hackett
Flaster Greenberg
1810 Chapel Avenue West
Cherry Hill, NJ 08002
Abbe F. Fletman (Argued)
Flaster Greenberg
1628 John F. Kennedy Boulevard
Eight Penn Center, 15th Floor
Philadelphia, PA 19103
William L. O’Connor
Dann, Pecar, Newman & Kleiman
2300 One American Square
Indianapolis, IN 46282
Attorneys for Appellees

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OPINION OF THE COURT
FISHER, Circuit Judge.
This appeal requires us to decide when the trade dress on
the packaging of store-brand products is so similar to that of
directly competing national-brand products as to create a
likelihood of confusion among consumers. The plaintiff-
appellant McNeil Nutritionals, LLC (McNeil) sells and markets
Splenda, a highly successful national brand of sucralose, an
artificial sweetener. The defendants-appellees Heartland
Sweeteners LLC and Heartland Packaging Corp. (collectively,
Heartland) package and distribute sucralose as store brands to a
number of retail grocery chains. McNeil brought a trade dress
infringement action against Heartland, alleging that Heartland’s
product packaging is confusingly similar to Splenda’s. McNeil
also filed a motion for preliminary injunction to enjoin
Heartland from advertising, selling, or distributing the allegedly
infringing products. The District Court denied the motion, and
this appeal followed. For the reasons that follow, we will affirm
the denial of the motion in part and reverse in part and remand
to the District Court.

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I.
A. Presence and Effect of Private-label and Store-
brand Products
Private-label products are typically manufactured by one
company for sale to the consuming public under another
company’s name. Such products are generally made with the
same active ingredient as the name-brand or national-brand
product with which the private-label product competes. Private-
label products are available in a wide range of industries and are
often positioned as lower cost alternatives (about 25% less
expensive) to national-brand products. As of 2005, private-label
sales represented 20% of all U.S. supermarket, drug chain, and
mass merchandiser sales and totaled $50 billion.
Store-brand products are a type of private-label product,
in which the store or retail chain name is the brand name. Store-
brand products have existed in retail chains since 1883, and
consumers have become highly aware of them. Indeed, the
Private Label Manufacturers Association reported that in 2005,
more than 90% of consumers polled were familiar with store
brands, and 83% bought them regularly.
Store brands are typically found on store shelves next to
the analogous national-brand products. The packaging of store-
brand products often includes reference points to invite the
consumer to compare them to the national-brand ones. These
reference points often include similar product packaging and
“compare to” statements on the packaging. Stores also employ
tags on store shelves (so-called shelf extenders or shelf talkers)

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that explicitly invite consumers to compare the store-brand
product with the national-brand analog.
Consumers are generally aware of the name of the store
in which they are shopping. They are aware that stores have
private-label brands that in most cases are merchandised next to
the national-brand products. Prices for the products are
typically displayed prominently. Consumers can, therefore, see
the cost difference between store brands and national brands.
B. Emergence of No-calorie Sweeteners
American consumers spend between $600 and $700
million annually on sugar substitutes, also known as artificial
sweeteners. No-calorie sweeteners are a subset of artificial
sweeteners. The market for no-calorie sweeteners is dominated
by products that contain one of three sweetening ingredients:
saccharin, aspartame, or sucralose. Saccharin was first marketed
in the United States in 1957; the leading brand of artificial
sweetener containing saccharin is Sweet ‘N Low. In 1982, the
FDA approved aspartame for sale in the United States; the
leading brand of artificial sweetener containing aspartame is
Equal. The FDA approved sucralose as a general purpose
sweetener in 1999. Sucralose is manufactured through a process
in which the molecular structure of sugar itself is modified,
making it more heat-resistant than saccharin and aspartame.
In September 2000, McNeil introduced Splenda, the first
artificial sweetener in the United States made from sucralose.
Sales of Splenda grew more than tenfold in just six years, from
approximately $32 million in 2001 to approximately $410

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million in 2006. Within a year of its introduction, Splenda
captured 14% of the total U.S. market for no-calorie sweeteners
(based on dollar volume). In 2006, Splenda captured
approximately 60% of the no-calorie sweetener market,
compared to approximately 15% for Equal and 14% for Sweet
‘N Low.
All three leading artificial sweeteners are sold in
distinctive packaging that helps consumers identify and
distinguish them. Sweet ‘N Low and other saccharin-based
sweeteners use predominantly red and pink packaging. This
practice informs consumers that the particular product is made
primarily with saccharin and, in the case of store-brand
products, that the item competes with Sweet ‘N Low. Equal and
other aspartame-based sweeteners use primarily blue packaging.
Nearly all grocery store chains sell private-label saccharin and
aspartame sweeteners that compare to Sweet ‘N Low and Equal,
respectively. Finally, Splenda uses primarily yellow packaging.
As of the time it commenced this litigation, McNeil had
spent nearly $250 million to promote and publicize the Splenda
brand to consumers. Through its campaign, McNeil has
highlighted the yellow Splenda packaging which includes the
Splenda trademark in gradated blue italicized lettering on a
white cloud. A Splenda package has been featured in nearly
every Splenda television commercial and print advertisement
since its launch.

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C. Splenda Packaging
McNeil began selling boxes of individual Splenda
packets in 2000. The boxes come in 100 and 200-count sizes
and are identical except for their size. The boxes are oriented
horizontally. The background is yellow, while the lettering on
the boxes is primarily blue. The trade name “Splenda” appears
at the top-center of the front of the boxes, in italicized blue
lettering. The trade name is surrounded by a white, oval-shaped
cloud. On the front, lower-right side of the boxes, there is a
photograph of a white cup of coffee and saucer, with an
individual Splenda packet resting on the saucer. On the front,
left side of the boxes, there is a photograph of a glass and
pitcher of iced tea. On the bottom-left corner is a circular
element that contains the blue all-caps text, “Made from Sugar,
Tastes Like Sugar.”
McNeil also sells granular Splenda in vertically-oriented
bags. The front of the Splenda bag is exactly the same as that of
the Splenda boxes, except that it displays different physical
props: a piece of pie on a plate, behind which are a bowl of
cereal and a scoop containing granular Splenda.
D. Ahold, Food Lion, and Safeway Packaging
In mid-2006, private-label and store-brand sucralose
products began to appear in the market. Heartland manufactures
and packages a number of store-brand artificial sweetener
products for retailers including Giant, Stop & Shop, Tops, Food
Lion, Safeway, Albertson’s, and Wal-Mart. Giant, Stop &
Shop, and Tops are all owned by Ahold, and the packages of the

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store-brand sucralose products sold by each of these stores are
identical except that each packaging contains that respective
store’s name and/or logo.
The Giant, Stop & Shop, and Tops (collectively, Ahold)
store-brand boxes of individual sucralose packets are oriented
horizontally. The boxes come in 100 and 200-count sizes and
are identical except for their size. The background is yellow,
while the lettering on the boxes is either blue or white. The
product name “Sweetener” appears at the top-center of the front
of the boxes, in italicized blue font. The product name is
outlined in white, but not by a cloud. On the lower-right corner
is a photograph of a white cup of coffee and saucer, a glass of
lemonade, and several fruits further off to the right side. There
is a white rectangular border surrounding the front of the boxes.
The store logo (regardless of the store name) appears just above
the product name.
The Ahold stores also sell granular sucralose in
vertically-oriented bags. The front of the Ahold bags is exactly
the same as that of the Ahold boxes, except that it displays
different physical props: a slice of cheesecake on a plate, a bowl
of cereal with raspberries, and a white cup of coffee and saucer.
The Food Lion store-brand 100-count box of individual
sucralose packets is oriented horizontally. The background is
yellow, while the lettering on the box is either blue or black.
The product name “Sweet Choice” appears on the bottom of the
front of the box, in italicized blue font. The product name is not
surrounded by a cloud. The front of the box contains a vertical
design element that divides it into two portions. The left portion

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is in a darker yellow than the right, and includes the Food Lion
logo (black) and store name (black) at the top. Food Lion uses
this vertical design feature in some of its other store-brand
packaging. The front-right portion contains a photograph of a
white cup of coffee, saucer, and teaspoon, behind which are a
pitcher of lemonade, two glasses of lemonade, and sliced
lemons.
Food Lion also sells granular sucralose in vertically-
oriented bags. The front of the Food Lion bag is exactly the
same as that of the Food Lion box, except that it displays
different physical props: a loaf of banana nut bread, a container
of sucralose with a scoop, and a bowl of mixed berries.
The Safeway store-brand boxes of individual sucralose
packets are oriented horizontally. The boxes come in 100 and
200-count sizes and are identical except for their size. The
background is yellow, while the lettering on the boxes is mostly
blue. The product name “Sucralose” appears on the bottom-left
of the front of the boxes, in italicized blue font. Each letter in
the product name is surrounded by a white shadow, but not all
together by a cloud. The front of the boxes contains a white
S-shaped design element that divides it into two portions. The
S-shaped element leads to a display of the Safeway name
(black) and logo (red) on the bottom-right corner. Safeway uses
this S-shaped design feature in some of its other store-brand
packaging. To the right of the S-shaped element is a circular
element containing the count-size of the box, also found on the
Safeway saccharin boxes. To the left of the S-shaped element
is a photograph of a white cup of coffee, bowl of strawberries,
and packet caddy containing individual packets of “Sucralose.”

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E. Additional Findings of Fact
A 100-count box of Splenda costs approximately $5.00,
while the comparable store-brand sucralose products vary in
price from approximately $4.00 to $4.60. The Heartland
products are merchandised next to Splenda. The majority of
sugar and artificial sweetener packages contain photographs of
foods and drinks in which the sweetener is an ingredient. For
example, packages typically depict hot and cold beverages, such
as coffee, tea, iced tea, or lemonade; fruit; cereal; and baked
goods, such as cake, bread, or pie.
In December 2006, Margaret Grossman, a California
consumer, mistakenly purchased Safeway’s “Sucralose” when
she intended to purchase Splenda. At the time, she was “just
buzzing through the market.” She did not look at pricing, but
just grabbed the box and ran. She is a self-described “surgical
strike” shopper, intending to shop at a faster pace than others.
She is aware that store-brand products exist; however, because
she is not a comparison shopper, she is not aware that they are
less expensive than national-brand products. Her yearly
household income exceeds $300,000, far above the national
median. She was not wearing her reading glasses while making
the inadvertent purchase. She continued to use the product for
three weeks before noticing that it was Safeway’s “Sucralose.”
F. Procedural History in the District Court
The procedural history of this case is straightforward. On
December 5, 2006, McNeil filed a seven-count complaint
against Heartland under federal and state law. Initially, McNeil

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sought relief for both the Splenda trade dress and the slogan
“Made from Sugar, Tastes Like Sugar.” On December 14,
2006, McNeil filed its motion for preliminary injunction. On
February 7, 2007, the District Court held an evidentiary hearing
on the motion, followed by oral argument on March 13, 2007.
On May 21, 2007, the District Court denied the motion with
respect to all of the allegedly infringing packages in a written
memorandum and order. Eight days later, McNeil filed a timely
notice of appeal from that decision. On appeal, McNeil does not
raise any arguments with respect to the “Tastes Like Sugar”
slogan or any arguments under state law, so its arguments and
thus our analysis are limited to the single issue of trade dress
infringement under federal law.
II.
The District Court had jurisdiction under 15 U.S.C.
§ 1121(a) and 28 U.S.C. § 1338. We have jurisdiction under 15
U.S.C. § 1121(a) and 28 U.S.C. § 1292(a)(1). To prevail on a
motion for preliminary injunctive relief, the moving party must
demonstrate that each of the following factors favors the
requested relief:
“(1) the likelihood that the moving party will
succeed on the merits;
(2) the extent to which the moving party will
suffer irreparable harm without injunctive
relief;

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(3) the extent to which the nonmoving party
will suffer irreparable harm if the
injunction is issued; and
(4) the public interest.”
Shire US Inc. v. Barr Labs. Inc., 329 F.3d 348, 352 (3d Cir.
2003).
We review the denial of a preliminary injunction for
abuse of discretion. However, “any determination that is a
prerequisite to the issuance of an injunction is reviewed
according to the standard applicable to that particular
determination.” Id. (internal ellipses and citation omitted).
Thus, we review a district court’s factual findings for clear error
and its legal conclusions de novo.
The District Court denied injunctive relief only on the
basis that McNeil did not demonstrate a likelihood of success on
the merits, and McNeil raises appellate arguments limited to that
basis, so we shall similarly limit our analysis in this opinion.
III.
The Lanham Act, 15 U.S.C. § 1125(a), establishes a
cause of action for trade dress infringement. TrafFix Devices,
Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28-29 (2001). “‘Trade
dress’ refers to the design or packaging of a product which
serves to identify the product’s source.” Shire US, 329 F.3d at
353. It is “the total image or overall appearance of a product,
and includes, but is not limited to, such features as size, shape,

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color or color combinations, texture, graphics, or even a
particular sales technique.” Rose Art Indus., Inc. v. Swanson,
235 F.3d 165, 171 (3d Cir. 2000). The purpose of trade dress
protection is to “secure the owner of the trade dress the goodwill
of his business and to protect the ability of consumers to
distinguish among competing producers.” Shire US, 329 F.3d
at 353 (internal brackets and citation omitted).
To establish trade dress infringement under the Lanham
Act, a plaintiff must prove that (1) the allegedly infringing
design is non-functional; (2) the design is inherently distinctive
or has acquired secondary meaning; and (3) consumers are
likely to confuse the source of the plaintiff’s product with that
of the defendant’s product. Id. In the case at bar, the District
Court analyzed the merits in favor of Heartland only on the basis
that there was no likelihood of source confusion, and we shall so
limit our analysis.
A likelihood of confusion exists when consumers
viewing the defendant’s trade dress probably would assume that
the product it represents is associated with the source of a
different product identified by the plaintiff’s similar trade dress.
A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc. (A & H
II), 237 F.3d 198, 211 (3d Cir. 2000). The likelihood of
confusion between two trade dresses is a question of fact. A &
H Sportswear, Inc. v. Victoria’s Secret Stores, Inc. (A & H I),
166 F.3d 191, 194 (3d Cir. 1999); Am. Home Prods. Corp. v.
Barr Labs., Inc., 834 F.2d 368, 370 n.2 (3d Cir. 1987); see also
A & H II, 237 F.3d at 237 (“The question of likelihood of
confusion is ultimately one of fact, and we cannot roll up our
sleeves and engage in the balancing ourselves.”).

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One type of confusion is initial interest confusion, which
is “confusion that creates initial customer interest, even though
no actual sale is finally completed as a result of the confusion.”
4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:6 (4th ed. 2007). Courts have applied the
initial interest approach “to the situation of look-alike private
branded products.” Id. For example, one court:
“found look-alike packaging on a non-
prescription medicinal product to be infringing
because it served to ‘hook customers at the initial
point of contact with the product, thus initially
drawing the customers to its product through the
similarity in trade dress.’ Even though the
customer subsequently may realize the true source
of the product before the sale is consummated, the
confusing similarity of appearance has attracted
the consumer and induced him or her to consider
purchasing the product. ‘Defendant has already
accomplished what it set out to do, which is to
confuse the consumer at the point when he first
reaches for the product on the shelf. It is at that
point that the damage is done.’”
Id. (internal citation omitted).
We have held that “initial interest confusion is actionable
under the Lanham Act.” Checkpoint Sys., Inc. v. Check Point
Software Techs., Inc., 269 F.3d 270, 292 (3d Cir. 2001). We
reaffirm the holding that initial interest confusion is an
independently sufficient theory that may be used to prove

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likelihood of confusion. See Australian Gold, Inc. v. Hatfield,
436 F.3d 1228, 1238-39 (10th Cir. 2006); Nissan Motor Co. v.
Nissan Computer Corp., 378 F.3d 1002, 1018 (9th Cir. 2004);
Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th
Cir. 2002); Mobil Oil Corp. v. Pegasus Petroleum Corp., 818
F.2d 254, 260 (2d Cir. 1987). Another type of confusion,
alleged in most Lanham Act cases, is point-of-sale confusion,
which occurs or remains at the time of purchase. 4 McCarthy,
supra, § 23:5.
Whether a plaintiff alleges initial interest or point-of-sale
confusion or both, a district court should employ the factors we
announced in Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d
Cir. 1983), to decide whether there is a likelihood of confusion.
Checkpoint Sys., 269 F.3d at 297. These factors, as modified
semantically in the trade dress context, are:
(1) the degree of similarity between the
plaintiff’s trade dress and the allegedly
infringing trade dress;
(2) the strength of the plaintiff’s trade dress;
(3) the price of the goods and other factors
indicative of the care and attention
expected of consumers when making a
purchase;
(4) the length of time the defendant has used
its trade dress without evidence of actual
confusion arising;

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(5) the intent of the defendant in adopting its
trade dress;
(6) the evidence of actual confusion;
(7) whether the goods, though not competing,
are marketed through the same channels of
trade and advertised through the same
media;
(8) the extent to which the targets of the
parties’ sales efforts are the same;
(9) the relationship of the goods in the minds
of consumers because of the similarity of
function;
(10) other facts suggesting that the consuming
public might expect the plaintiff to
manufacture a product in the defendant’s
market, or that the plaintiff is likely to
expand into that market.
Freedom Card, Inc. v. JP Morgan Chase & Co., 432 F.3d 463,
471 (3d Cir. 2005). “[T]he Lapp test is a qualitative inquiry.
Not all factors will be relevant in all cases; further, the different
factors may properly be accorded different weights depending
on the particular factual setting.” Id. (internal citation omitted).

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IV.
On appeal in this case, McNeil argues that the District
Court: (1) misapplied the first Lapp factor with respect to those
products for which it weighed the factor in favor of Heartland;
(2) erred in neglecting to consider the effect of color coding on
the sweetener industry; (3) misapplied the third Lapp factor on
consumers’ degree of care when selecting sweeteners;
(4) misapplied the sixth Lapp factor in disregarding evidence of
actual confusion; and (5) clearly erred in concluding there was
no likelihood of confusion with respect to those products for
which it weighed the first Lapp factor in favor of McNeil. We
address each of these arguments in turn.
A. First Lapp Factor: Degree of Similarity
Between McNeil’s Trade Dress and
Heartland’s Various Trade Dresses
We have held that “[t]he single most important factor in
determining likelihood of confusion is [trade dress] similarity.”
A & H II, 237 F.3d at 216. “The proper test is not side-by-side
comparison but whether the [trade dresses] create the same
overall impression when viewed separately.” Kos Pharms., Inc.
v. Andrx Corp., 369 F.3d 700, 713 (3d Cir. 2004) (internal
quotation marks and citation omitted). However, if buyers
typically see the two products side-by-side, as is true in this
case, then a side-by-side comparison may be appropriate. See
A & H II, 237 F.3d at 216. Here, the District Court conducted
a side-by-side comparison, and McNeil does not challenge its
choice to do so. Following its analysis, the District Court
concluded that “the similarity of trade dress factor weighs in

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1We do not interpret the District Court’s later comment
that “it is obvious that the trade dress of the store-brand
sucralose products is intended to suggest the Splenda trade
dress,” to mean that the District Court made a contrary finding
that all of Heartland’s packages were similar to Splenda’s, not
just the Ahold boxes and bags. The District Court’s later
statement, part of its analysis of the fifth Lapp factor (intent to
confuse rather than merely mimic), does not override the District
Court’s explicit findings as to the first Lapp factor (degree of
similarity in fact).
2The rule appears to have originated from a rather dated
opinion containing the following language: “the two marks
18
favor of finding that there is no likelihood of consumer
confusion for all of Heartland’s products except for the Ahold
100 and 200 count boxes of individual packets, and the Ahold
bag[s] of granular sucralose.”1
1. Heartland Products for Which the District
Court Weighed the Degree of Similarity
Against Finding a Likelihood of Confusion:
Food Lion Box, Food Lion Bag, and Safeway
Boxes
McNeil challenges the District Court’s analysis of the
first Lapp factor as to the Food Lion box and bag and the
Safeway boxes. McNeil argues that the similarities the District
Court found should have weighed more heavily than differences.
The majority of the courts of appeals, including ours, has not
adopted this rule.2 Instead, we have stated that forceful and

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should not be examined with a microscope to detect minute
differences, but, on the contrary, should be viewed as a whole,
as the general public would view them; in other words, that the
points of similarity are of greater importance than the points of
difference.” Guggenheim v. Cantrell & Cochrane, 10 F.2d 895,
896 (D.C. Cir. 1926). We read this proposition in its original
context of “minute differences” “examined with a microscope,”
which we agree should not be the focus in a trade dress
infringement analysis.
19
distinctive design features should be weighed more heavily
because they are more likely to impact the overall impression,
A & H II, 237 F.3d at 216, regardless of whether they happen to
be similarities or differences.
Further, although it is legal error to engage in a “detailed
analysis of the differences in the marks rather than focusing on
the overall impression created by them,” Fisons Horticulture,
Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 478 (3d Cir. 1994), it
likewise would be legal error to engage in a skewed analysis of
the similarities in the trade dresses rather than focusing on the
overall impressions they create. See Bristol-Myers Squibb Co.
v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1046 (2d Cir. 1992) (“in
a trade dress infringement case the question is not how many
points of similarity exist between the two packages but rather
whether the two trade dresses create the same general overall
impression” (internal quotation marks and citation omitted)).
McNeil’s proposed minority rule would improperly take the
focus away from the overall impression.

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We review for clear error the District Court’s
determination of whether the overall impressions created by two
trade dresses are similar. See Kos Pharms., 369 F.3d at 715; A
& H II, 237 F.3d at 218. “Clear error exists when, giving all
deference to the opportunity of the trial judge to evaluate the
credibility of witnesses and to weigh the evidence, we are left
with a definite and firm conviction that a mistake has been
committed.” A & H I, 166 F.3d at 194 (internal quotation marks
and citation omitted).
In the case at bar, we cannot say with a definite and firm
conviction that the District Court committed a mistake. With
respect to all three packages at issue, the most important
difference is that the trade name “Splenda” is not present, but
the name and logo of the respective stores are. The leading
commentator has observed:
“A vexing problem in trade dress cases is the
extent to which prominent placement of a
defendant’s own word or design marks on look-
alike trade dress will serve to prevent a likelihood
of confusion. The majority of cases hold that
labeling an otherwise infringing look-alike
product does not prevent infringement. However,
other cases in various factual settings, have found
that the use of defendant’s name on a look-alike
product or package is sufficient in the overall
context of the case to prevent a likelihood of
confusion.”

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1 McCarthy, supra, § 8:16. Indeed, the absence of the
“Splenda” label from the Food Lion and Safeway packages is
not sufficient to cure an otherwise infringing trade dress, nor is
the mere presence of another label. See Bristol-Myers Squibb,
973 F.2d at 1047.
However, the prominent presence of another well-known
word or design mark might be sufficient. Fun-Damental Too,
Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 1003 (2d Cir. 1997);
August Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 618 (7th Cir.
1995); Bristol-Myers Squibb, 973 F.2d at 1046 (“The presence
and prominence of markings tending to dispel confusion as to
the origin, sponsorship or approval of the goods in question is
highly relevant to an inquiry concerning the similarity of the two
dresses. When prominently displayed it can go far towards
eliminating any possible confusion.”); Fisher Stoves, Inc. v. All
Nighter Stove Works, Inc., 626 F.2d 193, 194-95 (1st Cir. 1980)
(“Each manufacturer displayed its name and logo prominently
. . . , clearly identifying [the product’s] origin[, so] . . . there is
hardly likelihood of confusion or palming off when the name of
the manufacturer is clearly displayed.” (internal citation
omitted)). We made a similar statement in Versa Products Co.
v. Bifold Co., 50 F.3d 189, 203 (3d Cir. 1995), though limited in
the product configuration (as opposed to product packaging)
context. Although we reaffirm Versa Products in the sense that
the Bristol-Myers Squibb principle is strongest in product
configuration cases, the principle does not lose all applicability
in packaging cases, especially because Bristol-Myers Squibb and
August Storck were both product packaging cases.

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On facts even more akin to those before us, the Court of
Appeals for the Federal Circuit reached the same holding in
Conopco, Inc. v. May Department Stores Co., 46 F.3d 1556,
1568 (Fed. Cir. 1994) (collecting supporting cases). There, the
court applied Eighth Circuit law in a store-brand product
packaging trade dress case and held that there was no likelihood
of confusion because “[a] factor more probative of that issue . . .
is the significance of the black and white diagonally-striped
Venture [the name of the store] logo prominently situated on the
front of the original and relaunched Venture products.” Id. at
1566.
To be sure, we do not suggest that the prominent
presence of another well-known mark is an affirmative defense
to every trade dress infringement action. Sunbeam Prods. Inc.
v. W. Bend Co., 123 F.3d 246, 259 & n.25 (5th Cir. 1997),
abrogated on other grounds by TrafFix Devices, 532 U.S. at 28.
But this fact unquestionably plays a role in a district court’s
analysis of the first Lapp factor, such that it may cause the
overall impressions created by two trade dresses to be different
enough for the first Lapp factor to be weighed in a defendant’s
favor. When it is relevant, district courts should consider this
fact as part of its analysis of the degree of similarity (first Lapp)
factor, as was done in Fun-Damental Too, 111 F.3d at 1003,
Versa Products, 50 F.3d at 202-03, and Bristol-Myers Squibb,
973 F.2d at 1046, as opposed to some sort of independent
defense.
Applying these principles to the case at bar, we conclude
that there was no clear error. First, “Food Lion” and “Safeway”
are well-known because they are well-known to the consumers

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3Although this is an additional difference supporting the
District Court’s conclusion, it is not the difference that matters
under Bristol-Myers Squibb. This is because “Sweet Choice” is
not well-known to Food Lion shoppers the way “Food Lion” is.
Put another way, these shoppers might expect the source of
Splenda to produce a product called “Sweet Choice,” but they
would not expect the source of Splenda to produce a product
under the “Food Lion” store brand. The Court of Appeals for
the Second Circuit made a similar distinction in Fun-Damental
Too. See 111 F.3d at 1003.
23
who shop in the stores with those same names. Second, the
stores are represented prominently on their respective packages.
For example, the Food Lion name and logo in black (a color
with virtually no presence on the front of Splenda packages) are
displayed in the top-left corner. As importantly, a vertical
design element runs through the front of the package, visually
dividing it between a dark yellow bar and a light yellow canvas,
in a way found on other Food Lion store-brand products. The
yellow color aside, these features are far more similar to other
Food Lion store-brand packaging features and therefore
distinguish themselves from any feature present on the Splenda
packages. These distinguishing elements are also found on the
Food Lion bag of granular sucralose.
The District Court found additional differences between
the Food Lion trade dress and Splenda trade dress. First, the
Food Lion product name “Sweet Choice” is shown rather than
“Splenda.” 3 Second, “Sweet Choice” is positioned at the bottom
of the box, rather than at the top. Third, whereas “Sweet
Choice” is not surrounded by a white cloud, “Splenda” is.

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24
Fourth, missing from the Food Lion packages is the circular
element with the slogan “Made From Sugar, Tastes Like Sugar.”
When combined with the distinguishing use of the Food Lion
name and logo, these differences are not minute ones found only
upon examination with a microscope. See n.2, supra.
As for the Safeway boxes, the question is closer, but
again not enough for us to conclude that the District Court
committed clear error. Here, although the “Safeway” name and
logo are not prominently displayed on its “Sucralose” product,
the packages contain an S-shaped element that divides the entire
front of the box vertically, so it is prominently displayed and
visually striking. True, this S-shaped element is not as well-
known to a Safeway shopper as the store’s name, but its
presence on other Safeway store-brand products renders it well-
known as a store-specific signature that alerts the shopper that
the product is more associated with Safeway than Splenda or
anything else for that matter. A closer look at the S-shape
would also cause the shopper to see the Safeway name and logo
to which the S-shape leads, so on balance, the District Court
could find that the S-shape design unique to Safeway materially
differentiates the overall impressions created by the Splenda and
Safeway packages, per Bristol-Myers Squibb.
As with Food Lion, the District Court found additional
differences between the Safeway trade dress and Splenda trade
dress. First, the product name “Sucralose” is shown rather than
“Splenda.” Second, “Sucralose” is positioned at the bottom of
the box, rather than at the top. Third, whereas “Sucralose” is not
surrounded by a white cloud, “Splenda” is. Fourth, missing
from the Safeway packages is the circular element with the

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25
slogan “Made From Sugar, Tastes Like Sugar.” Instead,
Safeway’s packaging contains a circular element with the box’s
count size. Again, the District Court could find that these
cumulative differences are fairly forceful and distinctive. See A
& H II, 237 F.3d at 216.
When we apply the clear error standard of review to these
facts, we cannot say with a firm and definite conviction that the
District Court made a mistake in finding that the overall
impression created by the Food Lion and Safeway packages is
not similar to that created by Splenda’s. This is especially true
because in Bristol-Myers Squibb, August Storck, and Conopco,
the Courts of Appeals for the Second, Seventh, and Federal
Circuits, respectively, found clear error when the district courts
weighed the degree of similarity factor in favor of plaintiffs
where the defendants’ own well-known marks were prominently
displayed. See 973 F.2d at 1046; 59 F.3d at 620; 46 F.3d at
1566. Here, where the District Court weighed that factor in
favor of the defendant by way of reasoning similar to that of our
sister courts in those cases, we would be contradicting them
were we to intrude upon the District Court’s factfinding role in
the opposite direction and say that it may not weigh the first
Lapp factor in favor of the defendant under these circumstances.
Therefore, the District Court did not clearly err in weighing the
first Lapp factor in favor of Heartland as to both the Food Lion
and Safeway products.
2. Heartland Products for Which the District
Court Weighed the Degree of Similarity in
Favor of Finding a Likelihood of Confusion:
Ahold Boxes and Ahold Bags

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4Although our assumption makes it unnecessary to
evaluate the District Court’s application of the first Lapp factor
to the Ahold products, we explain briefly here why the District
Court reached a different conclusion from that for the Food Lion
and Safeway products. First, on the Ahold packaging, there is
no prominently displayed distinguishing design feature akin to
the Food Lion vertical bar or the Safeway S-shape that
associates them to other store-brand products as opposed to
Splenda. Second, the Ahold product name “Sweetener” is
placed at the top of the front of the packaging, just like
“Splenda,” rather than at the bottom.
26
With respect to the Heartland products (the Ahold boxes
and bags) for which the District Court concluded that the first
Lapp factor favors McNeil, McNeil argues that the District
Court erred in not weighing this factor more than the others in
the ultimate balancing. See Kos Pharms., 369 F.3d at 709
(“each factor must be weighed and balanced one against the
other”). We will address this argument after examining whether
the District Court misapplied any of the other Lapp factors. See
section IV.E., infra. For now it suffices to say that, because
Heartland does not challenge the District Court’s finding with
respect to the first Lapp factor, we will assume that it weighs in
favor of McNeil as to those packages. 4
B. Color Coding
McNeil argues that the history of color coding in the
sweetener industry increases the likelihood of consumer
confusion among sucralose-based products. A restaurant
consumer, for example, encounters a range of sweeteners

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27
organized by packet color: white (and possibly brown) for
sugar, pink for saccharin, blue for aspartame, and yellow for
Splenda. According to McNeil, these colors have become a
“shorthand” by which consumers identify their sweetener of
choice. Moreover, there is apparently a history of the
manufacturers of Equal and Sweet ‘N Low waiting too long to
challenge imitators of their respective colors, whereas McNeil
has been challenging its imitators since Splenda’s inception.
Therefore, McNeil argues that yellow does not signify sucralose;
it signifies Splenda.
There are several problems with this argument. First,
McNeil focuses it on the first Lapp factor. Yet, the District
Court’s analysis of the first Lapp factor amply considers yellow
color as a point of similarity. Insofar as the District Court
weighed the factor against McNeil, it is because the overall
impressions of the packages are different, notwithstanding their
uniform use of yellow. As we already have analyzed, the
District Court did not clearly err on that score.
Second, just because a consumer sees yellow packaging
in the sugar aisle does not mean that she believes McNeil or
Splenda to be the source, especially because consumers are
generally aware of the use of pink and blue by manufacturers
other than those of Sweet ‘N Low and Equal, respectively. The
sugar aisle in a representative grocery store also contains yellow
packages of products other than sucralose, including sugar itself.
In this factual context, we cannot conclude that whenever any
other sucralose producer uses yellow packaging, consumers are
likely to associate that product with Splenda.

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28
C. Third Lapp Factor: Degree of Consumer Care
The third Lapp factor focuses on “the price of the goods
and other factors indicative of the care and attention expected of
consumers when making a purchase.” 721 F.2d at 463.
“The following non-exhaustive considerations
should guide a court’s determination of the
standard of ordinary care for a particular product.
Inexpensive goods require consumers to exercise
less care in their selection than expensive ones.
The more important the use of a product, the more
care that must be exercised in its selection. In
addition, the degree of caution used depends on
the relevant buying class. That is, some buyer
classes, for example, professional buyers will be
held to a higher standard of care than others.
Where the buyer class consists of both
professional buyers and consumers, the standard
of care to be exercised by the reasonably prudent
purchaser will be equal to that of the least
sophisticated consumer in the class.”
Versa Prods., 50 F.3d at 204-05 (internal quotation marks,
ellipses, and citation omitted). Here, McNeil argues that the
District Court erred in attributing a heightened level of care to
consumers of no-calorie sweeteners. McNeil quotes from Versa
Products and argues that: (1) because the products at issue cost
on average between $4.00 and $5.00, they are inexpensive; and
(2) the least sophisticated consumer in the buying class is not

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29
buying sucralose for health reasons and thus is not likely to
exercise heightened care and attention.
Initially, we note that McNeil inaccurately characterizes
the District Court’s analysis as applying a “presumption” that
sucralose consumers exercise special care. Here, the District
Court did not presume but instead concluded – based on two
affidavits – that the level of care and attention a consumer uses
when purchasing no-calorie sweeteners are heightened because
she often purchases them for health reasons: “blood-sugar
disorders, including diabetes; obesity; weight loss; fitness; and
tooth decay.” The affidavits also refute McNeil’s statement that
there is no record evidence indicating that consumers who
purchase a no-calorie sweetener apply a heightened level of
care.
On the merits of McNeil’s argument, the District Court
did not err in defining the consumer class as consisting mostly
of people who buy sucralose to improve their health. Versa
Products’ instruction to look to the “least sophisticated
consumer in the class” is limited on its own terms to “[w]here
the buyer class consists of both professional buyers and
consumers.” Id. at 205; accord Checkpoint Sys., 269 F.3d at
285 (applying doctrine where “both average consumers and
specialized commercial purchasers buy goods”). Professional
buyers are generally wholesalers, retailers, and long-established
buyers. 4 McCarthy, supra, § 23:100. McNeil cites Ford Motor
Co. v. Summit Motor Products, Inc., 930 F.2d 277, 293 (3d Cir.
1991), for the proposition that we have never held that
professional buyers are required to create a mixed class. This is
simply not true. In that case we specifically defined the buyer

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30
class as “consist[ing] of both professional buyers [in that case
auto dealers] and consumers.” Id.
Even more tellingly, the case on which we relied in Ford
Motor to craft the “least sophisticated consumer” doctrine in the
first place, Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp.
1417 (S.D. Ohio 1990), specifically found that a “heightened
awareness of health and healthy foods raises the standard of care
which the reasonable purchaser of the parties’ products would
exercise.” Id. at 1448. Worthington demonstrates that it is not
proper, let alone necessary, to equate “health-conscious” with
“professional.” The ordinary consumer class consists of both
health-conscious people (more of them in this case) and less
health-conscious people (fewer of them in this case); this
collection of consumers does not constitute the sort of “mixed
class” we discussed in Ford Motor. Here, it is undisputed that
the buyer class does not include professional buyers, so the
District Court did not need to discern a “least sophisticated
buyer” within a class consisting solely of ordinary consumers.
McNeil has one more arrow in its quiver, however. It
argues that the health-conscious consumers distinguish not
between brands of sucralose (both “healthy”), but only between
sugar (“unhealthy”) and sucralose (“healthy”). When faced with
just sucralose products, the argument goes, these consumers
need not exercise any heightened care when choosing which one
to buy. We also reject this argument. First, it was never raised
before the District Court. As such, Freedom Card counsels that
we decline to address it. See 432 F.3d at 477-78. Second, even
were we to address it, because the representative retail grocery
store places sugar right next to sucralose, and sugar packages are

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31
often yellow, even when purportedly choosing one sucralose
product over another, the reasonably prudent consumer might be
careful not to pick up sugar by accident.
In sum, not presiding over the preliminary injunction
hearings ourselves, we cannot say that the District Court clearly
erred in finding that the reasonably prudent consumer in this
case exercises some heightened care and attention when buying
sucralose because her health considerations typically override
the products’ low cost. Therefore, the District Court did not
clearly err in stating that the third Lapp factor did not weigh in
McNeil’s favor.
D. Sixth Lapp Factor: Evidence of Actual
Confusion
On this factor McNeil argues that the District Court erred
in concluding that McNeil failed to produce any evidence of
actual consumer confusion. McNeil states that Ms. Grossman’s
testimony requires the District Court to weigh this factor in
favor of McNeil. There are two problems with this argument.
First, the District Court did not “completely disregard”
Grossman’s testimony. In fact, the District Court began by
citing Versa Products for the proposition that “proof of actual
confusion is not required for a successful trade dress
infringement action under the Lanham Act.” 50 F.3d at 205.
The District Court then proceeded to consider thoroughly
Grossman’s testimony, but concluded – based on her own
admissions (that she is a speed “surgical strike” shopper, that
she is not a comparison shopper, that her yearly household
income exceeds $300,000, that she did not look at the prices on

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32
the day she made her inadvertent purchase, and that she was not
wearing her reading glasses that day) – that Grossman was not
representative of the kind of shopper ordinarily purchasing
sucralose.
Whatever the merits of this analysis, McNeil overstates
its argument by averring that the District Court disregarded
Grossman’s testimony in its entirety. The relevant passage from
the District Court’s memorandum is as follows:
“Heartland’s allegedly infringing products were
introduced in mid-2006. This relatively short
period of time and the fact that the products at
issue are inexpensive, may explain why McNeil
has not been able to produce credible evidence of
actual consumer confusion. Therefore, even
though McNeil has not produced any evidence of
actual consumer confusion, we find it
inappropriate to draw an inference that is unlikely
to be able to do so. Consequently, we find that
factor four does not favor Heartland or McNeil.”
The District Court’s statement that “McNeil has not produced
any evidence of actual consumer confusion” is therefore an
inadvertent mistake because the District Court also states:
“McNeil has not been able to produce credible evidence of
actual consumer confusion.” As the quoted passage reveals, the
District Court then weighed the fourth Lapp factor in favor of
neither litigant. We find unavailing, then, McNeil’s attempt to
turn the District Court’s technical misstatement on a separate
Lapp factor (length of time defendant uses trade dress without

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33
evidence of actual confusion) into a ruling against it with respect
to the factor McNeil actually argues on appeal (evidence of
actual confusion).
McNeil fares no better on the merits. It cites precedent
for the proposition that “evidence of actual confusion may be
highly probative of the likelihood of confusion.” Checkpoint
Sys., 269 F.3d at 291. This is an unremarkable proposition. The
District Court nonetheless has the ability – indeed, the duty – to
weigh that evidence in analyzing the sixth Lapp factor. See id.
at 297; A & H II, 237 F.3d at 227. Many courts of appeals have
endorsed the view that “[e]vidence of only a small number of
instances of actual confusion can be dismissed as
inconsequential or de minimis.” 4 McCarthy, supra, § 23:14
(collecting cases). For example:
“Just as one tree does not constitute a forest, an
isolated instance of confusion does not prove
probable confusion. To the contrary, the law has
long demanded a showing that the allegedly
infringing conduct carries with it a likelihood of
confounding an appreciable number of reasonably
prudent purchasers exercising ordinary care.”
Id. (quoting Int’l Ass’n of Machinists & Aerospace Workers v.
Winship Green Nursing Ctr., 103 F.3d 196, 200-01 (1st Cir.
1996)). It is still true that “it takes very little evidence to
establish the existence of the actual confusion factor,” id.
(quoting AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1544 (11th
Cir. 1986)), but a district court may weigh the sixth Lapp factor
in favor of a defendant when it concludes that “the evidence of

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34
actual confusion was isolated and idiosyncratic.” A & H II, 237
F.3d at 227; see also Checkpoint Sys., 269 F.3d at 298; Ziebart
Int’l Corp. v. After Mkt. Assocs., Inc., 802 F.2d 220, 228 (7th
Cir. 1986) (“a ‘single misdirected communication’ would not
show actual confusion of the marks by the consuming public”).
Further, “[a]s to those few customers who do not care about
brands and do not pay any attention to them, such ‘brand
indifferent’ customers do not count in the equation of likelihood
of confusion.” 4 McCarthy, supra, § 23:5 (collecting cases).
Applying these principles to the case at hand, we
conclude that the District Court did not improperly weigh
Grossman’s testimony. Grossman’s own admissions indicate
that she is brand indifferent and otherwise unrepresentative of
the typical shopper, and McNeil presented no other customer
testimony. As in A & H II, then, “the District Court’s
conclusion as to the absence of [probative evidence of] actual
confusion was supported by the record.” 237 F.3d at 227.
McNeil would have us hold that even one piece of evidence of
actual confusion compels a weighing of the sixth Lapp factor in
favor of a plaintiff; neither precedent nor common sense
supports such a result.
E. Balancing the Lapp Factors to Reach an
Ultimate Factual Finding on Likelihood of
Confusion; the District Court Clearly Erred in
Not Finding a Likelihood of Confusion as to
the Packages for Which It Weighed the First
Lapp Factor in McNeil’s Favor

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35
Having concluded that the District Court did not
misapply any of the Lapp factors for which McNeil alleges
error, we have one final though critical question to answer:
whether, for the products for which the District Court weighed
the first Lapp factor in favor of McNeil, an intermediary finding
that is easily justifiable and also not challenged on appeal, see
section IV.A.2. & n.4, supra, it then committed clear error in not
ultimately finding likelihood of confusion. The products, again,
are the Ahold 100 and 200-count boxes and the Ahold bags of
granular sucralose.
Here, the District Court committed clear error. On the
record before us, there is no way the District Court could have
ultimately balanced the Lapp factors against McNeil after
weighing the first, second, seventh, eighth, and ninth Lapp
factors in its favor (and the third, fourth, and tenth factors in
favor of neither party) with respect to the Ahold boxes and bags.
See Kos Pharms., 369 F.3d at 725 (“a remand for reweighing
would waste judicial resources and unnecessarily delay the
proceedings further”). The District Court clearly erred in the
ultimate balancing of the Lapp factors because it did not
adequately heed our oft-repeated statement that “[t]he single
most important factor in determining likelihood of confusion is
[degree of] similarity.” A & H II, 237 F.3d at 216; Fisons
Horticulture, 30 F.3d at 476. Further, “when goods are directly
competing [as is undisputed in the instant case], both precedent
and common sense counsel that the similarity of the marks takes
on great prominence.” A & H II, 237 F.3d at 214; accord Kos
Pharms., 369 F.3d at 713.

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36
It is true that “[n]ot all factors will be relevant in all
cases; further, the different factors may properly be accorded
different weights depending on the particular factual setting.”
Freedom Card, 432 F.3d at 471. However, the first Lapp factor
is always relevant, and when it favors the plaintiff in a directly
competing goods scenario, especially in which the District Court
found only the fifth and sixth Lapp factors to favor the
defendant outright, the defendant attempting to rebut the
likelihood of confusion has a high hurdle to overcome. Here,
the District Court apparently considered the following facts as
rebuttal:
“Consumers are highly aware of the existence of
store-brand products; when they are shopping in
a particular store they are aware of the store’s
name; each of the Heartland products on sale in
grocery stores displays the store name/logo; the
Heartland and Splenda products typically appear
next to each other; and there are other signals to
the consumer on grocery store shelves; such as
price differentials and shelf-talkers inviting
consumer[s] to compare and save, that indicate to
the consumer that the Heartland and Splenda
products are not the same.”
But with respect to the products for which the District Court
weighed the first and several other Lapp factors in McNeil’s
favor, these considerations – even when combined with a correct
finding in Heartland’s favor on the sixth Lapp factor and what
we assume is a correct finding in Heartland’s favor on the fifth
Lapp factor (which McNeil does not challenge on appeal) – are

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37
insufficient on the record before us to overcome the likelihood
of confusion. See Kos Pharms., 369 F.3d at 725 (finding clear
error in any ultimate balancing that results in no likelihood of
confusion when the pro-plaintiff first Lapp factor in a competing
goods situation is pitted against the pro-defendant third Lapp
factor and neutral fourth and sixth Lapp factors).
The danger in the District Court’s result is that producers
of store-brand products will be held to a lower standard of
infringing behavior, that is, they effectively would acquire per
se immunity as long as the store brand’s name or logo appears
somewhere on the allegedly infringing package, even when the
name or logo is tiny. The Lanham Act does not support such a
per se rule.
We are not saying that the explanation provided by the
District Court carries no weight. The fact that the products at
issue were store-brand products does play a role in the inquiry.
For example, in Conopco, the Court of Appeals for the Federal
Circuit reasoned:
“The unique and extensive appearance of that
logo in the store parking lot, on store signs, on
employees’ badges, in Venture’s frequent and
periodic print and television advertisements, and
on other private label items sold by Venture, the
large volume of Venture’s annual sales ($1.3
billion in 1990), and the dearth of evidence that
consumers ever purchased the Venture brand
thinking it to have originated from Conopco [the
national-brand product manufacturer] despite the

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38
extended (over 10 year) period over which the
original and relaunched products were sold
alongside the Venture brand, give rise to the
expectation that consumers identify the logo with
Venture, rather than Conopco, and use that logo
to successfully distinguish between the two
brands. The fact that Venture (and other retailers)
compete in the manner described, which is all that
the evidence establishes, is simply insufficient to
amount to proof that there is in the minds of
consumers a likelihood of confusion about whose
product is whose.”
46 F.3d at 1568. This reasoning is similar to the District Court’s
here, and it further supports our affirmance of the District Court
on the products for which it weighed the first Lapp factor
against McNeil.
However, it fails to save the District Court’s conclusion
on the Ahold boxes and bags. In contrast to the products in
Conopco, see 46 F.3d at 1567 (product photos included in the
opinion), the store name and logo are not prominently displayed
on the Ahold packaging. Indeed, as already explained, the Food
Lion and Safeway packages are in this sense much closer to the
Conopco packages because a store-specific signature is
prominently displayed on them, thereby substantially reducing
the degree of similarity and hence the likelihood of confusion.
The same simply cannot be said for the Ahold packages, and the
District Court itself so found. To repeat, the District Court may
take Conopco into account when analyzing the Lapp factors, in
particular the first Lapp factor because under the Bristol-Myers

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39
Squibb framework, the more a store’s name and/or logo are
present around that store’s shoppers, the more likely those
shoppers will know well that name and/or logo, which in turn
may serve to differentiate materially a store-brand packaging
that displays them prominently. The District Court may not,
however, consider the Conopco reasoning as an independent
defense that altogether overrides the Lapp factors.
The nuanced distinction we make also brings the trade
dress infringement issue back to its proper focus: just how
similar the trade dresses are. See, e.g., Andrew Corydon Finch,
Comment, When Imitation Is the Sincerest Form of Flattery:
Private Label Products and the Role of Intention in Determining
Trade Dress Infringement, 63 U. CHI . L. REV . 1243, 1276 (1996)
(“courts should focus their efforts on the real issue: whether two
trade dresses are so similar as to create a genuine likelihood of
confusion among consumers”). Arguably under our holding,
store brands can “get away” with a little more similarity than
other defendants’ products when they display prominently a
well-known label, e.g., a store-specific signature, on their
packages, but they cannot copy the national brands to such a
degree of similarity, then merely affix a tiny differentiating
label, as to become entirely immune to infringement actions.
Compare TrafFix Devices, 532 U.S. at 29 (“Trade dress
protection must subsist with the recognition that in many
instances there is no prohibition against copying goods and
products.”), with Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763, 774 (1992) (“Protection of trade dress, no less than of
trademarks, serves the [Lanham] Act’s purpose to secure to the
owner of the mark the goodwill of his business and to protect

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5McNeil cannot, however, proceed under a post-sale
confusion theory because the District Court rejected it, and
McNeil does not challenge that conclusion on appeal.
40
the ability of consumers to distinguish among competing
producers.” (internal quotation mark omitted)).
Finally, our reversal of the District Court’s clear error as
to the Ahold boxes and bags based on its insufficient weighing
of the first Lapp factor permits McNeil in its motion for
preliminary injunction to proceed under an initial interest
confusion theory (as well as a point-of-sale confusion theory) as
to those products.5
V.
For the foregoing reasons, we will affirm the District
Court’s denial of preliminary injunctive relief as to the Food
Lion and Safeway products, but reverse the denial as to the
Ahold 100 and 200-count boxes and the Ahold bags of granular
sucralose. McNeil has demonstrated a likelihood of success on
the merits for purposes of preliminary injunctive relief with
respect to the third element of trade dress infringement, viz.,
under the Lanham Act, there is a likelihood of confusion
between these products’ trade dresses and the analogous
Splenda trade dress. As to these Ahold products only, we will
therefore remand for the District Court to consider whether
McNeil establishes a likelihood of success on the remaining
elements of trade dress infringement under the Lanham Act, as
well as the remaining factors for preliminary injunctive relief.

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