Tag Archives: trade dress

Manufacturer of “Tommy Guns” Files Suit Against Tommy Guns Vodka

Posted on April 14, 2013 | Leave a comment

Saeilo Enterprises, Inc., whose Kahr Arms divisions is a manufacturer of firearms  including the Thompson submachine gun (a.k.a. “Tommy Gun”),  filed suit on March 27, 2013 against Alphonse Capone Enterprises, Inc.  for selling Tommy Guns Vodka.  As shown above, this vodka is also sold in a bottle shaped just like the well-known gun that gained notoriety in the “gangster era” of the 1920′s.

Saeilo not only claims common law trade dress rights in the design of the Tommy Gun, but is the owner of United States trademark Reg. No.  2,885,628 for the word mark “Tommy Gun” and Illinois state registration number 100887 for the Tommy Gun design.

Notably, the Defendant had also obtained federal trademark registrations for  the Tommy Gun word marks and for the bottle design, which date back to 2004 and 2005.  See Registration Nos. 2,849,028, 2,696,412, 2,955,440 and 3,402,327.

Based on the alleged infringement of these rights, Saeilo has alleged ten different claims, including  trademark infringement,  trademark dilution, unfair trade practices and for cancellation of the defendant’s registered marks.

Please see the Complaint here.

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Posted in False Advertising, Trademark and Trade Dress

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Campbell Soup Co. Accuses “Chicken Soup for the Soul” of Infringement

Posted on October 24, 2012 | Leave a comment

Campbell Soup Company has filed suit against Chicken Soup for the Soul Publishing, LLC for “willful trademark and trade dress infringement, false designation of origin, trade dress dilution, deceptive acts and practices, and unfair competition.”   These claims are all based on the contention that the Defendant is using “trade dress strikingly similar to Campbell Soup’s iconic script typeface and distinctive label lay-out for use in connection with the sale of food products ….”  In particular, Campbell’s alleges that the defendant “directly copied the script ‘C’ and red coloring” from Campbell’s, along with the gold wave on the label.  Prior to filing suit, Campbell’s complained to the defendant who changed the above-depicted label by substituting an orange / brown color for the red element of the design and made modest changes to the gold line and fonts for  the letters C and S in the Chicken Soup for the Soul name.   Those changes did not satisfy Campbell’s which filed suit on October 17, 2012.

Campbell’s claims will undoubtedly be helped by its numerous trademark registrations relating to its “iconic script typeface” in connection with soup, an example of which is shown below.

The case is pending in the U.S. District Court for New Jersey as See the full Complaint here.

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Posted in Trademark and Trade Dress

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German Court: Pepsi Does Not Infringe Trademark for Coca-Cola’s Contour Bottle

Posted on June 11, 2012 | Leave a comment

The Coca-Cola “contour” bottle is a classic example of trade dress.  Separate and apart from the name and logo on the label, its overall visual appearance serves to distinguish it from other sodas and identifies the source of the product to consumers, thus giving rise to trade dress rights in that visual appearance.  The boundaries of these rights, however, are not easily defined.

Case in point is a May 31st decision by the Hamburg Regional Court in Germany.   The court held that Coke’s classic “contour” bottle (below left) was not sufficiently similar to PepsiCo’s “Carolina” glass bottle (below right) and PepsiCo thus did not unfairly take advantage of the reputation of Coca-Cola’s trade dress, which was the subject of several EU trademark registrations.  

Central to the ruling was the finding that the contour (or “scalloped”)  form of the Coke bottle was not, standing alone, protectable because it is a general shape used by many manufacturers.  The court then found that the Coke bottle was distinctive because of the vertical grooves on the neck and lower body that are separated by a wide “belt” in the middle.  The Pepsi bottle had neither of these design elements and, in contrast, features wavy, horizontal lines on the lower half without any “belt.” 

The case is LG Hamburg, 315 O 310/11.

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Posted in Trademark and Trade Dress

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In-N-Out Burger Fights Copycat in China

Posted on March 15, 2012 | 1 Comment

Excellent article in QSR Magazine about In-N-Out Burger being drawn into a battle over its identity in China even though it has no presence in China and, indeed, has been reluctant to expand beyond the West Coast.  In short, a start-up restaurant in Shanghai called CaliBurger, whose founders include former Californians, trademarked numerous items from In-N-Out Burger’s menu (including its “secret” menu) in Asia and portions of Europe, such as the Double-Double, Animal Style, and Protein Style burgers.   Those menu items, however, were subject to U.S. trademark registrations by In-N-Out Burger.  According to QSR:

In-N-Out Burger responded swiftly by filing a complaint in a U.S. District Court against CaliBurger [and two of its founders] in September for trademark infringement, a legal move enabled by one major detail: CaliBurger was an American company, registered to an address in Diamond Bar, California.

In-N-Out Burger’s claims included Trademark Infringement, Trademark Counterfeiting,  and Trade Dress Infringement.   A copy of the First Amended Complaint is here.   The lawsuit, filed on September 14, 2011, ultimately resolved in January 2012 pursuant to a confidential settlement agreement and the copycat menu names were changed.   See QSR Magazine’s complete article here.

The experience of In-N-Out Burger demonstrates that food and restaurant companies must remain vigilante in protecting their intellectual property rights overseas even if they have no intent to expand beyond the United States.

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Posted in Trademark and Trade Dress, Uncategorized

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Battle of the “Bowl” Chips: Frito-Lay v. Ralcorp

Posted on March 3, 2012 | 1 Comment

On February 10th, Frito-Lay filed suit in the Eastern District of Texas against private-label specialist Ralcorp and accused it of infringing Frito-Lay’s federally-registered trademark for bowl-shaped tortilla chips (below) by manufacturing, on behalf of Wal-Mart, MEDALLION BOWLZ tortilla chips.

In this regard, Frito-Lay contends that its design mark (U.S. Reg. No. 2,766,278)  is embodied in its TOSTITOS SCOOP! tortilla chips (on left) and that the MEDALLION BOWLZ chips (on right) are confusingly similar.

Frito-Lay further alleges, “on information and belief,” that Ralcorp infringed three utility patents relating to the manufacture of such chips.

On the same day Frito-Lay filed its suit, Ralcorp counter-sued in the Eastern District of Arkansas for declaratory judgment of non-infringement and cancellation of Frito-Lay’s design mark based on assertions that (a) the “bowl-shaped configuration” of the chip is “functional” by allowing the user to use the chip as a bowl for salsa, dip, etc., and thus not allowed as a trademark, and (b) the design mark has been abandoned because TOSTITOS SCOOP! chips do not, according to Ralcorp, incorporate the particular aspects of the mark.  Not surprisingly, the parties are presently engaged in motion practice with regard to the proper forum for the litigation.

Ralcorp’s attacks on Frito-Lay’s design mark — especially the “functional” claim — have some heft.  That said, if Frito-Lay obtains evidence of actual consumer confusion then its claims will gain strength.  All in all, this will be an interesting case to follow and epitomizes the battle between established, national brands and private label / house brands that have increased since the 2008  economic downturn.

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Posted in Trademark and Trade Dress, Uncategorized, USPTO

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Sazerac Accuses Hood River Distillers of Infringing its FIRE Trademarks

Posted on February 17, 2012 | 1 Comment

On February 10, 2012, Sazerac Company, Inc. filed suit against Hood River Distillers, Inc. in Federal Court in Louisville.  Sazerac claims that its trademarks and trade dress relating to its FIREBALL cinnamon whiskey and FIRE WATER cinnamon liqueur are infringed by Hood Rivers’ new SINFIRE cinnamon whiskey.

In order to bolster its claim that consumers are likely to be confused by the SINFUL mark, Sazerac’s Complaint alleges, among other things, as follows:

“[Hood Rivers' SINFIRE] whisky is golden brown in color and is bottled in a clear flask-like bottle with red and orange flames arising from the bottom of a large black stylized “S.”  The “S” has a curly serpent-like tongue extending from the head of the letter, and a pointed devil’s tail at the lower end of the letter emerging from the flames.  “SINFIRE” is displayed in block font directly under the flames where the word “SIN” is in black and the word “FIRE” in red. The dominant color combination for the product package is black, red, and orange.”

See the full Complaint here.  Without more,  the use of “fire” in SINFIRE is likely not enough to find it confusingly similar to FIRE BALL and/or FIRE WATER, even though it applies to the same type of goods.  This case might therefore provide some interesting insights on the broader scope of a company’s rights as to additional design elements in its trademarks and trade dress.

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Posted in Beer wine and spirits, Trademark and Trade Dress

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