Category: Trademark Litigation

Kroger Trademark Dispute

Trademark War: US Supermarket Giant Challenges Formidable European Newcomer

Kroger is a grocery store super giant. Operating around 2,800 stores nationally, it is America’s largest grocery store chain. Its stores generated $115.3 billion in total sales in 2016 with approximately $20 billion in sales coming from its in-house brand “Private Selection”. That’s a lot of dough. So when European grocery giant Lidl began opening stores in the US and using its in-house brand “Preferred Selection”, Kroger quickly took action to protect its hard-won turf by filing a trademark infringement and dilution lawsuit, claiming that Preferred Selection is likely to cause confusion among consumers and dilutes the value of Kroger’s registered trademarks.
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ganjagonia trademark dispute

Patagonia Challenges Trademark Application for Ganjagonia

It’s an interesting time for marijuana related businesses. At the state level, several states have given them a green light. On the federal level, however, the light is still very much red. In states where marijuana laws have been eased, entrepreneurs have been actively developing businesses around pot culture. But these entrepreneurs run into problems with federal trademark registration because the US Patent & Trademark Office is federally regulated. Trademark examiners have typically rejected marijuana related marks. However, one Colorado based web producer has passed the federal hurdle for his trademark application on Ganjagonia – a marijuana themed web cartoon, but now faces a more traditional trademark challenge from an actual company, as the outdoor retailer Patagonia is challenging his trademark application. Continue reading “Patagonia Challenges Trademark Application for Ganjagonia”

M&M's outlawed in Sweden

Mars May be too Late to Secure M&M’s Branding Rights in Sweden

M&M’s may be loved the world over, but if Swedish people want them, they may need a new name. This news comes after the Swedish Court of Appeals ruled that the M&M’s mark causes confusion among Swedish consumers due to a traditional Swedish chocolate candy that also comes marked with the letter “M”. Mars, the manufacturer of M&M’s, will now need to change the name of the candies in Sweden, appeal the decision, or face penalties laid out by the Court of Appeals if it continues selling there.

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Converse Trademark Lawsuit

Converse Wins Trademark Victory at ITC – Sort of

Converse’s Chuck Taylor shoes are one of the oldest and most recognizable athletic shoes around. Designed specifically for basketball players, the shoes were introduced in 1917. Converse says that it has sold more than a billion pairs of the shoes worldwide since then. However, even though the shoes have a long history and a distinctive look, they don’t have exclusivity on every design element incorporated into the shoe. That’s the ruling from the US International Trade Commission after Converse filed a trademark complaint with the ITC in 2014.

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coke zero trademark

Coke Wins Partial Victory Against Dr. Pepper in “Zero” Trademark Dispute

Coca-Cola is a giant in the beverage industry. If you said everyone in the world knows what Coke is, it may actually be true and not just an exaggeration. With such recognition and substantial marketing resources behind its zero calorie drinks like “Coke Zero”, “Sprite Zero” and “Powerade Zero”. Coke has finally convinced the United States Patent and Trademark Office (USPTO) to allow its trademark registration on the term “zero” in conjunction with its beverages. This grant comes in spite of Dr. Pepper’s protests that the term is a generic reference to zero-calorie drinks. The decision is limited however, and leaves the door open for Dr. Pepper to also register its “zero” products and pushes any future disputes into federal court.

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Indiana Bakeries Square off Over Square Donuts

Donuts have never suffered from a popularity issue. With high demand, supply typically rises to match. And as the competition intensifies, bakeries look for ways to innovate and separate themselves from the pack.

One way that a Terra Haute, Indiana bakery has done so is by going against the norm and producing a square shaped donut. While the square shape may have been original, the name it chose to call these donuts was not. The bakery called itself and the donuts it produced, “Square Donuts.” This lack of originality has led to a trademark dispute with another unimaginative bakery in Valparaiso, Indiana, that is also attempting to call its cornered donuts “square donuts.”

Square Donuts Bakery has been producing the 4 sided donuts since 1968. The bakery has proven successful and expanded to 9 additional bakeries in other areas of Indiana. As Square Donuts expanded, a bakery in Valparaiso called Family Express, also expanded into the cornered donuts market, beginning production of the distinctively shaped pastries. It called them, generically enough, square donuts.

This mimicry led Square Donuts to send a cease-and-desist letter to Family Express over the use of the name in 2006. Family Express responded saying it didn’t believe that it was infringing on any trademark rights to the name. The bakeries carried on with their respective square shaped donuts for several years, until the name conflict flared up again.

Square Donuts filed for a trademark application with the USPTO in 2012 and received a trademark registration in 2013. Family Express filed its own trademark application in 2015, but was rejected based on a likelihood of confusion with the Square Donuts registration. Now, Family Express has filed for declaratory judgment to resolve the issue of who has rights to the square donuts name once and for all.

One might argue that SQUARE DONUTS really just describes the actual product. If you asked someone what they saw when they looked at the cornered donuts, they would likely say a square donut. Descriptive names usually aren’t granted trademark protection because giving exclusive rights to a descriptive name preempts competitors from accurately describing their products. This is why Family Express believes that it is not infringing on any valid trademark rights owned by Square Donuts. It sees the name as merely descriptive and Square Donut’s trademark rights should be canceled.

On the other hand, an argument can be made that it is not a descriptive mark or at least has SQUARE DONUT has acquired distinctiveness. While the donuts may be square, there is a good argument that the square shape of the donuts themselves has acquired distinctiveness as a three dimensional or configuration mark. Thus, arguably you could have both a configuration mark and a word mark representing the square donut configuration mark. Configuration and descriptive marks are more easily protected if steps are taken early on to secure trademark rights. Seeking registration is one of these steps.

These two bakeries will hash it out over branding rights, but the moral of the story is that if you really want a protectable brand name, you should spend some time early on getting sound legal advice so you can take steps to secure your trademark rights before major issues arise challenging those rights.

Delta Airlines

Delta Airlines Files Lawsuit Against Vacation Scammers

Delta is one of the largest airlines in the world. That’s what makes it an attractive target for trademark infringement. If you want your business to look legitimate, it helps to be associated with Delta. But if you aren’t legitimate and don’t have Delta’s permission to use its brand, you run the risk of getting sued, which is exactly where a group in Florida finds itself.

Delta recently filed a sealed trademark infringement lawsuit against a group of Florida based “trademark pirates” that Delta claims have been using materials with Delta logos and branding to scam people into buying bogus vacation packages. The lawsuit is sealed, which means that the defendant is not immediately named. Delta hopes by not naming the group it will be able to prevent them from destroying incriminating evidence. Delta is pursuing a federal raid to obtain the counterfeit materials. If the defendants are notified too early, the infringers have the chance to destroy marketing materials using unauthorized Delta branding, making it more difficult for Delta to prove infringement.

The lawsuit claims that the company advertises a special relationship with Delta and offers up to 60% off on travel. The company targets consumers both domestically and internationally via fax and other forms of communications. These advertisements mislead consumers into believing there is a real association with Delta. Delta says that this illegal use of its intellectual property harms the company’s brand and is seeking punitive damages. This is an interesting infringement case because it involves direct copying and use of an actual brand. More often, trademark infringement cases involve at least some difference between the infringing brand and the actual brand. Typically a mark is not copied exactly but is similar enough that it confuses consumers into believing there is some connection between the two products or companies.

This, however, appears to be a classic case of counterfeiting. A claim for trademark counterfeiting can be pursued under federal law using the Lanham Act. A “counterfeit” trademark is defined under federal law as a “spurious mark which is identical with, or substantially indistinguishable from, a registered trademark.” Classic trademark counterfeiting commonly involves an unauthorized third party providing a product or service that is made to imitate a product or service of the victim, including the victim’s trademark, so that consumers are deceived into purchasing what they believe is the victim’s product or service.

Regardless of the type of infringement, it is important to protect your brand. Any type of infringement can damage your company’s reputation even if by merely diluting the strength of your brand identity. If you have questions about the trademark process or are ready to file a trademark application, please contact the trademark attorneys at Trademark Access. Let our experience protect your valuable brand.

Milano Cookie

Milano Cookie Trademark: Pepperidge Farms versus Trader Joe’s

While a traditional cookie is round, they can come in all kinds of delicious shapes and sizes. A cookie that ventures outside the cookie shape norm is Pepperidge Farms’ Milano cookie. The Milano is a distinctive oval shaped cookie sandwich with chocolate in the middle. It has been a big hit for Pepperidge Farms and they intend to keep it that way. That’s why they recently filed a lawsuit for trademark infringement against Trader Joe’s alleging Trader Joe’s Crispy Cookies infringe the look and package design of Pepperidge Farm’s iconic Milano cookies. Continue reading “Milano Cookie Trademark: Pepperidge Farms versus Trader Joe’s”

Pine Tree Trademark Lawsuit

Air Freshener Trade Dress Fight: Pine Vs Palm

Everyone has seen the tree shaped air freshener dangling from a rear view mirror used to cover up the scent of stale French fries and gym clothes. Air fresheners turn out to be big business. That’s why Car-Freshener Corp of New York is suing Exotica Fresheners of Ohio for trademark infringement, claiming Exotica is knocking off its trademark look right down to the packaging and style of the writing it uses. Car-Freshener wants Exotica to stop imitating its branding and pay Car-Freshener damages for misleading consumers. Continue reading “Air Freshener Trade Dress Fight: Pine Vs Palm”

Cancellation Proceeding: Nautigirl Defeats Nautica

In David versus Goliath fashion, Christine Palmerton, owner of a small business and the brand Nautigirl, overcame a challenge to her trademark registration by mega brand Nautica. Palmerton had a U.S. trademark registration for her Nautigirl logo, which included the word Nautigirl and an image of a sassy looking sailor woman. Nautica claimed that Palmero’s brand was too similar to its brand and sought cancellation of her mark. After nearly three years of litigation and the support of a law school pro bono clinic, the U.S. Patent and Trademark Office sided with Palmerton. Continue reading “Cancellation Proceeding: Nautigirl Defeats Nautica”