News & Events

On September 12, 2005, the Firm achieved a significant victory for its client Weight Watchers International in the U.S. Court of Appeals for the Second Circuit. In early 2003, Weight Watchers sued Luigino's, Inc., a manufacturer of frozen food products, for infringement of Weight Watchers' famous POINTS® service mark after Luigino's began to display the POINTS values of Luigino's products on the front panel of the product packaging without Weight Watchers' permission. In 2003, the Firm obtained a preliminary injunction in the Southern District of New York requiring Luigino’s to modify its packaging, on the ground that Luigino's use of the mark was likely to confuse consumers into a mistaken belief that Weight Watchers had calculated or verified the displayed POINTS values and had therefore authorized or endorsed Luigino's products. After the injunction was entered, Luigino's revised its packaging to add a disclaimer on the front panel stating that it had calculated the displayed POINTS values, which Weight Watchers believed was insufficient to avoid confusion.

The Firm moved to modify the preliminary injunction to enjoin the revised packaging. On July 1, 2004, the District Court entered an order requiring Luigino's to make further changes to the back panel of the revised packaging, but denied the motion to restrain Luigino's from continued use of the revised front panel. On appeal, the Second Circuit held that the District Court abused its discretion by failing to require Luigino's to prove that the added disclaimer would be effective in overcoming the likelihood of confusion that the District Court previously found when entering the original injunction. The Second Circuit accordingly vacated the judgment of the District Court and remanded the case for further proceedings consistent with its opinion.

Kerry Konrad, Jennifer Rackoff, Tai-Heng Cheng, Robyn Rahbar, former associates Mariya Treisman and Joel Zighelboim, and Dan O'Neil (paralegal) contributed to the winning team effort.