Category Archives: Trademark and Trade Dress

Nutrition Consulting Firm Sues Gatorade Over “SportsFuel” Trademark

SportsFuel, Inc., a nutrition consulting firm outside of Chicago, has filed a lawsuit against PepsiCo Inc. and its wholly-owned subsidiary The Gatorade Company  over the SPORTSFUEL trademark.  SportsFuel owns federally-registered trademarks for SPORTSFUEL and alleges that, “[o]ver the past two decades, SportFuel, Inc. has performed nutritional consulting for a number of elite sports teams, including the Chicago Blackhawks, the Chicago White Sox, the Chicago Bears, [and] the Chicago Bulls….”

The lawsuit was apparently triggered by Gatorade’s recent campaign to market itself as “The Sports Fuel Company,” which Plaintiff alleges is likely to confuse consumers as to sponsorship, authorization, affiliation, and/or association between the companies.

Notably, this is a case where Plaintiff will likely argue that there is the potential for “reverse confusion.”  Under this type of trademark infringement, the subsequent user’s promotion of the mark overwhelms the use by the prior user such that purchasers start to associate the mark with the subsequent user.  As a result, there is reverse confusion, with purchasers likely to believe that the goods or services offered by the prior user are actually those of the subsequent user.

Trademark Battle over “Umami Burger” in Chicago

On June 17th, Umami Restaurant Group Inc. (“URG”) filed a trademark infringement lawsuit against Wsong, Inc., d/b/a as bopNgrill, a Korean inspired burger restaurant located in Chicago.  URG complains that BopNgrill is selling a “Umami Burger”menu item and that this creates a likelihood of consumer confusion between the two restaurants.

URG operates a chain of burger joints called Umami Burger, most of which are in California.   The first location in the Midwest opened in Chicago in 2014.  It owns several U.S. trademark registrations relating to UMAMI BURGER, the earliest of which was filed on August 4, 2011.

URG will likely face two hurdles in pursuing its lawsuit.  First, bopNgrill opened its first restaurant in 2009 and has been at its current location since 2011.  Although it is unclear when bopNgrill first sold an “umami burger,” if it was prior to the filing date of URG’s trademark application, then bopNgrill can argue that it has priority to the name “Umami Burger” in the Chicago area.  That is because trademark use is the key to establishing priority in a particular territory.  Although a federal trademark registration gives a trademark owner rights at the national level, those rights only start on the filing date of the application and prior use in a geographic area trumps a later-filed application where the registrant didn’t use the mark in that particular territory.

Second, umami is a descriptive term for a savory taste, which is considered one of the five basic tastes (along with sweet, bitter, sour and salty).  Accordingly, bopNgrill can argue that URG’s trademark rights are weak since trademark law limits the protections given descriptive trademarks.  After all, a burger joint has a right to describe its burgers as savory.  This argument has more force for bopNgrill as well because it’s using “umami” in connection with a menu item rather than the store itself.   Although bopNgrill is apparently not using “umami” in a strictly descriptive manner, it can assert that this case is analogous to someone trying to prevent others from selling “salty pretzels.”

This case underscores the risks of having a brand name tied to a descriptive mark which can increase the time and effort that must be expended to police the associated trademark rights.

Ferrero Files Infringement Suit Against Brooklyn Crêperie Over NUTELLA Trademark

The Ferrero Group, which manufactures the well-known NUTELLA brand hazelnut and cocoa spread, filed a trademark infringement suit against a Brooklyn crêperie over its use of allegedly confusingly-similar marks.

The lawsuit, filed in the U.S. District Court for the Eastern District of New York, alleges that crêperie, GCAS Cafe, “specializes in offering food and drinks which use Ferrero’s NUTELLA brand hazelnut and cocoa spread as the most prominent ingredient.”  The cafe had been using the term “Nutelleria” in connection with signage at its cafe, domain names of websites (www.NutelleriaNY.com, www.NutelleriaMia.com, and www.NutelleriaLA.com), and social media accounts on Facebook, Twitter and Instagram.  Ferrero alleges that when its attorneys were negotiating with GCAS’s attorneys about use of “that mark, the cafe changed from using “Nutelleria” to “Nuteria” on its signs and on the internet.  See, e.g., www.nuteriaNY.com and facebook.com/NuteriaNY.   Although GCAS no doubt believed this switch would satisfy Nutella, it was mistaken.

In the complaint, Ferrero contends that consumers who type in the term “Nutelleria” in Google or type in the “Nutelleria” domain names are redirected to the current “Nuteria” websites and, thus, “the term NUTELLERIA functions as a mark to direct traffic to the GCAS cafe.”  Ferrero further contends that (a) the “Nuteria” mark is displayed with “Nu” presented differently than “teria” to convey that consumers should pronounce “Nu” the same way as in “Nutella” and (b) the “prominent display” of Nutella posters and jars at the cafe is such that it creates the impression that there’s a “connection between GCAS Cafe and Ferrero or the NUTELLA” trademarks.

In light of these and other concerns, Ferrero asserts claims for trademark infringement and trademark dilution under federal law, a claim under New York state’s anti-dilution and unfair trade practices statute, and a common law claim for unfair competition.

This case is intriguing because GCAS is clearly a fan and promotor of Nutella and the parties’ interests are generally aligned.  The problem, of course, is that GCAS created a new mark — Nutelleria — that echoed and called-to-mind the NUTELLA mark.  But for reasons unknown, negotiations between the parties broke down when GCAS unilaterally (as alleged by Ferrero) changed the mark to “Nuteria” which Ferrero does not specifically allege as being confusingly similar to Nutella.

Red Bull Facing Criticism for Trademark Opposition Against “Old Ox Brewery” Marks

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A short while ago I posted a piece on the power of social media with respect to certain IP disputes.  There is a new dispute that might serve as a powerful footnote on this issue.

On January 28, 2015, Red Bull GmbH filed a Notice of Opposition in the USPTO against applications for the OLD OX BREWERY and the OX Logo marks, as shown above.  Red Bull alleges that its famous energy drinks and other beverages will be confused with the beverages sold by Old Ox Brewery under the foregoing marks.  In particular, Red Bull alleges that:

An “ox” and a “bull” both fall within the same class of “bovine” animals and are virtually indistinguishable to most consumers. In addition, an ox is a castrated bull.

Applicant intends to use its name and logos on other Class 32 beverages,namely soft drinks for non-beer drinkers….

The Class 32 goods on which Applicant claims it has an intent to use in conjunction with Applicant’s OLD OX Marks include and are closely related to, used for the same or similar purposes, and/or are or will be advertised and promoted to and directed at the same trade channels, the same purchasers, and are or will be used in the same environment as Opposer Red Bull’s products and related goods and services.

Simultaneous use of Applicant’s OLD OX Marks on the Class 32 goods … and Opposer Red Bull’s RED BULL and Bull Logo Marks on its goods and related services … is likely to cause confusion, mistake or deception among purchasers, users and the public, thereby damaging Red Bull.

The critical allegations are thus that consumers will confuse or conflate the terms “Bull” and “Ox” and that the relevant beverages are related or overlap.

In a response posted to its website and social media on February 8th, Old Ox Brewery posted a public letter to Red Bull which stated as follows, in relevant part:

We are a small startup brewery in Ashburn, Virginia. We’re family-run, we love beer, and we love our community. For reasons that we cannot understand, you have attempted to strong arm us into changing our identity for the last 10 months because you believe folks might mistake Old Ox beer for Red Bull energy drinks. We respectfully disagree. The only similarity between our two products is that they are both liquids. You make non-alcoholic (but very extreme) energy drinks. We make delicious (but laid-back) beer. Our consumers are looking for two distinctly different experiences from our respective products.

Basically you are holding us hostage with a list of demands that, if agreed to, would severely limit our ability to use our brand. Demands like, never use the color red, silver or blue; never use red with any bovine term or image; and never produce soft drinks. Do you own the color red? What about fuchsia, scarlet, crimson, or mauve? Are you planting your flag in the color wheel and claiming those shades for Red Bull? Do you claim exclusive rights to all things bovine? Do you plan to herd all heifers, cows, yaks, buffalo, bison, and steer into your intellectual property corral, too?

When we refused to succumb to your demands, you responded by filing a formal opposition to not just our trademark but to the very name Old Ox Brewery. Way to step on our American dream. You say you are protecting your intellectual property rights, but your claim, in our opinion, is Red Bulls**t.

…. Can you honestly look at our brand and say, “this is a threat to my image?” We don’t think you can. Given that, we repeat our offer: We agree NEVER to produce energy drinks. In exchange, we are asking for one simple thing: Leave us alone. Drop this trademark dispute.

In addition, Old Ox has recently started a change.org petition that has so far collected over 1,600 supporters.

The broader news media has picked up on this dispute and, so far, they are generally siding with Old Ox.  For example, the Washington Post’s article is titled “Red Bull Wants to Rename an Ashburn Brewery, Because an Ox Looks Like a Bull.”  Whether Red Bull persists with the opposition or decides to moderate its demands, remains to be seen.

Lagunitas “IPA” Lawsuit and Lessons in Social Media

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When determining whether to file a lawsuit, the cost-benefit analysis must always include public reaction, which these days plays out almost instantly on social media.  But predicting public reaction is quite imprecise.  Case in point is Lagunitas Brewing Co.’s recent lawsuit against Sierra Nevada Brewing Co., which was filed on Monday, January 12th and then voluntarily dismissed on Thursday, January 15th.

In the lawsuit, Lagunitas claimed that Sierra Nevada infringed numerous trademarks registered with the U.S. Patent and Trademark Office for several design-plus-word marks pertaining to its India Pale Ale, all of which feature  the words “Lagunitas IPA” that are variations on the above.   None of the registrations, however, are for the word mark “IPA” standing alone and many other brewers have trademark registrations for names of beer that include “IPA.” Recognizing this fact, Lagunitas further alleged that, “[w]hile other brewers have adopted the shorthand parlance of “IPA” to market their India Pale Ales, only Lagunitas is identified with the large, bold, black, centralized “IPA” lettering ….”

Claims for trademark infringement, unfair trade practices and unjust enrichment were alleged against Sierra Nevada premised on the following allegations:

[Sierra Nevada’s] proposed design uses all capital, large, bold, black “IPA” lettering in a font selection that is remarkably similar to the iconic Lagunitas design and, indeed, is the central and most prominent feature of the new Sierra Nevada design, emulating the iconic Lagunitas Family  of IPA Trademarks.  This proposed design even uses the kerning between the “P” and the “A” characters that is distinctive to the Lagunitas Family of IPA Trademarks….  Significantly, Sierra Nevada now appears to be making a radical departure from its traditional label designs which feature “IPA” lettering in much smaller text, usually preceded by another term (i.e., “Fresh Hop,” “Extra,” “Rye”, “Red,” etc.) of the same text size and which feature outdoor/nature scenes. Instead, … the proposed Hop Hunter IPA design is strikingly different from its prior imagery used with its India Pale Ales.

Lagunitas further alleged that the likelihood of confusion as to origin increases when the product is viewed at some distance and, moreover, that there’s a high likelihood of confusion as to “sponsorship or approval” between the companies because “Sierra Nevada is well-known in the craft brew industry for its collaboration with other brewers.”

But when the filing the lawsuit became publicized, Lagunitas was harshly criticized because it seemed focused on protecting the acronym “IPA”, which describes a type of beer.  As noted by CNBC:

The beer battle fell flat on social media.

“Really – Is this necessary?” tweeted @FW_Brewmaster.

“This is ridiculous, @lagunitasbeer should be ashamed,” added @mattmaceachem.

As for the logos creating confusion among consumers, @BeerMagazine tweeted, “The only thing confusing is this,” referring to the lawsuit.

“It was stunning actually, and by 10 o’clock in the morning I was reeling,” [the founder and CEO of Lagunitas, Tony] Magee said about the backlash online. ”  I went home at the end of the day feeling as if I’d run a marathon or been beaten up.”

Indeed, on February 13th, Magee sent the following tweets which began by defending the lawsuit and ended with the statement that the lawsuit would be withdrawn.

This is just a course of action we did not want to take. I attempted to work it out privately w/ SNB but not successful. Deeply saddened…

Today, January 13th 2015, has been the worst day ever in 23 years of growing my brewery. Worst. Growing a biz involves defending a biz…

Defending a biz requires answers to Hard Questions. Q’s like: Are our Foundations Strong? Are our Flavors right? Are our Labels Defensible?

There r many Courts in the world. For me, over the last month, one Court was a series of rebuffed phone calls. Another was a court of law…

Today was in the hands of the ultimate court; The Court of Public Opinion and in it I got an answer to my Question; Our IPA’s TM has limits.

I don’t know every answer beforehand, so I feel around for the edges and try to learn. Today I was seriously schooled & I heard you well…

Tomorrow mornin we’ll Drop the Infringement Suit & get back to answering other Questions. I don’t think I was wrong for wanting to know cuz…

I had to know the Answer, but the Answer came much sooner than I thought and in a different Court than I thought it would. Can I say thanks?

As he wisely notes, there are various “courts” in which business disputes are considered and judged.  Because trademark rights represent the goodwill of a company, sometimes efforts to defend trademarks can, ironically, do more than good to that goodwill.

Popcorn Companies in Battle Over “Chicago Mix” Trademark

Candyland, Inc., which operates stores in Minneapolis – St. Paul, has filed trademark infringement suits against three sellers and/or distributors of popcorn that allegedly use the term “Chicago Mix,” including Chicago-area favorite Garrett Popcorn.   In 1992, Candyland obtained a federal trademark registration for CHICAGO MIX in connection with “flavored popped popcorn.”  For Candyland, the “Chicago Mix” refers to the ” combination of traditional seasoned popcorn mixed with caramel and cheddar flavored popcorn.”

On August 7 and 8, 2014, Candyland filed three separate suits in the Northern District of Illinois against CandyCrisp LLC (which does business as Garrett Popcorn Shops), Snyder’s-Lance, Inc. (which distributes a line of popcorn under the O-KE-DOKE mark), and Cornfields (which distributes a line of popcorn under the G.H. CREDTORS mark).  All three defendants are accused of distributing and/or selling popcorn using the term “Chicago Mix” and thus infringing Candyland’s trademark rights.

With respect to Garrett, the Chicago Tribune reports that “[t]his isn’t the first time Candyland has tussled with … Garrett Popcorn Shops.”

In 2008, while in Chicago for a trade show, [Candyland co-owner Brenda Lamb] noticed that Garrett was using the name and promptly sent the company a friendly letter asking them to remove it.  It complied, according to Lamb, but a while later, the Lambs noticed that the Chicago Mix name had returned to use.

“We’ve been back and forth with Garrett’s for years,” Lamb said.  “We’re trying to be friendly colleagues of the business, and I think we were successful at being that way.  It wasn’t that we were spitting venom at each other.”

The Tribune further reports that Candyland and Garrett are engaged in settlement discussions and that Garrett is already transitioning from “Chicago Mix” to “Garrett Mix”, a change that Garrett states was initiated prior to the lawsuit.

Duke v. The Duke: Trademark Dispute Over Alcoholic Beverages

Duke University and John Wayne Enterprises, Inc. (“JWE”) are engaged in trademark litigation over the “Duke” trademark in connection with alcoholic beverages.  JWE is operated by John Wayne’s descendants and enters into licenses and partnership agreements with respect to the name and likeness of John Wayne.  The dispute arose when Duke opposed trademark applications filed by JWE for “Duke” and “Duke John Wayne” in connection with alcoholic beverages except for beers.  In its oppositions, Duke University alleged that JWE was seeking trademarks substantially similar to the university’s “famous mark … for goods that are closely related to goods and services with which” Duke uses its DUKE marks.  Accordingly, Duke asserted that the applications should be rejected because the applied-for marks were likely to cause confusion and/or dilution with respect to Duke’s trademarks.

JWE was apparently so taken aback by Duke’s position that it filed a complaint for declaratory judgment with the U.S District Court for the Central District of California.   Specifically, it asserted that it feared that Duke University “intends to sue JWE for trademark infringement” and it therefore “seeks a judicial declaration of no likelihood of confusion and nondilution to remove that cloud.”  JWE calls Duke’s position “ludicrous” and noted that the DUKE bourbon sold under license features John Wayne’s signature, an image of a shotgun casing and the words “Kentucky Straight Bourbon Whiskey Small Batch.”

From Duke University’s perspective, they are doing what most companies (or universities) would do in their position — they are exercising their affirmative duty to police their trademarks by objecting to the registration of a substantially similar mark.  After all, Duke University uses its mark on a wide variety of products and those marks can be weakened if there are lots of other “Duke” marks on the trademark registry.  JWE’s position is equally rationale.  It does not believe its “Duke” mark, as specifically used on its products in connection with John Wayne and especially on alcoholic products, could ever be confused with Duke University.

See complete copy of the complaint here.