There’s Only Room for One Man Can, Judge Says

(CN) - A soap company cannot sell Manly Man Cans because the bundle of male-targeted beauty products is too similar to its competitor's product, The Man Can, a Boston federal judge ruled.

Plum Island Soap Co.'s Man Can is a gift set of soaps and scents marketed toward men and packaged in a paint can. The Massachusetts-based company says the Man Can is sold nationwide and was featured in the Boston Globe as one of its "20 quirky gift ideas under $50."

In 2009, Danielle and Co. launched its own set of soaps and shampoos for men, packaged in a paint can and called The Manly Man Can.

Obviously having fun with the case, U.S. District Judge Nathaniel Gorton said "one might say they look uncannily alike."

After Plum Island obtained a patent on The Man Can in 2010, it sent a number of cease-and-desist letters to Danielle, which is based in Scranton, Pa.

Danielle first modified its design and then stopped selling the product altogether, but the company's vendors continued to sell the old merchandise, leading Plum Island to request a preliminary injunction in June 2011.

Gorton granted the request, finding that The Man Can and Danielle's design "are remarkably similar."

"Because there is a substantial likelihood of confusion, irreparable harm may be presumed and weighs in favor of granting a preliminary injunction," Gorton wrote.

Though "it is unclear whether Danielle intended to copy Plum Island's design," the judge noted that the company may have benefitted from thousands of dollars that Plum Island spent on marketing and trade shows.

Since Danielle's modified design uses different colors and packaging and does not include the word "can" in the title, there is a much lower risk of confusion, according to the court.

"Plaintiff has shown a substantial likelihood of confusion with respect to the original Danielle design but not necessarily the modified design," Gorton wrote.

Given these concerns, the court issued a preliminary injunction enjoining Danielle & Co. from selling any product with the word "can" in it, but permitting it to continue selling the modified design.

Danielle must also post a disclaimer on its website that says it is "not in any way related to or affiliated with the Plum Island Soap Company."

"The preliminary injunction shall remain in full force until the case is decided on the merits or until modified by further order of this court," Gorton concluded.

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