Tag Archives trademark

Czech and U.S. brewers seeking to market their beers under the name “Bud,” have apparently been at odds since the early 1900s. In the latest installment of the dispute, the Court of Justice of the European Communities has set aside a decision of the Court of First Instance which allowed the Czech brewer to oppose Anheuser-Busch’s registration of “Bud” in Europe. Anheuser-Busch Inc. v. Budějovický Budvar, No. C 96-09 (E.C.J., decided March 29, 2011). While the Court of Justice upheld some of the lower court’s rulings, it determined that the lower court erred (i) in the factors it relied on to decide if a “sign,” or trademark, in opposition to a new registration was used in a sufficiently significant manner, and (ii) in holding that the use of the sign in opposition does not necessarily have to occur before the date of the application for new registration. According to the Court…

Hormel Foods, LLC has filed a complaint in a Minnesota federal court against a company that also makes a canned meat product, alleging that the company is infringing Hormel’s SPAM® trademark, which consists of yellow lettering on a blue background. Hormel Foods, LLC v. Zwanenberg Food Group (USA), Inc., No. __ (D. Minn., filed March 30, 2011). The defendant allegedly began selling its product in October 2010 in a can with yellow labeling on a blue background. When Hormel sent a cease and desist letter, the company allegedly switched to a new design, white on a red background. Thereafter, the defendant resumed using the yellow on blue background label for products shipped to the Philippines and Japan. According to the complaint, Hormel has produced 7 billion cans of SPAM® products, making the brand “a famous American icon. Its timelessness has earned it roles in films, a fan club and a…

The company that makes Johnny Love Vodka® has filed a trademark infringement suit against the companies making “Pucker Vodka,” alleging that the lip imprint on the Pucker labels is likely to confuse consumers because of its similarity to the registered lip imprint on the plaintiff’s flavored-vodka bottles. JL Beverage Co., LLC v. Fortune Brands, Inc., No. 11-00417 (D. Nev., filed March 18, 2011). According to the complaint, JL Beverage Co. has used the Johnny Love Vodka mark, which incorporates a parted lip imprint as the “o” in the word “Love,” since 2004 and registered it in 2005. The lipstick color apparently varies depending on the vodka’s flavor. Alleging that the defendants recently began promoting and selling a line of flavored vodkas with a label incorporating a “nearly identical” parted lip imprint in varying colors, the plaintiff seeks injunctive relief, an order to recall and destroy all infringing products, an accounting, compensatory…

The London shop that sells ice cream made with donated breast milk has reportedly been cleared to continue selling the product after government tests determined it was fit for human consumption. Additional details about the investigation into Baby Gaga ice cream appear in Issue 384 of this Update. The owner of Icecreamists, the store that sells the product, is apparently considering legal action against the Westminster Council, which confiscated the product for quality-control tests. Owner Matt O’Connor was quoted as saying, “They should have waited until they got the tests back before saying our product could have been a risk to the public.” Meanwhile, attorneys for pop superstar Lady Gaga have sent a cease and desist letter to the ice cream store, accusing it of unfairly cashing in on her name and image and demanding that it stop using the Baby Gaga name. They reportedly called the ice cream “nausea-inducing,”…

Having considered the matter for some six years, the General Court of the European Union (EU) has determined that chocolate makers Lindt & Sprüngli AG and August Storck AG cannot register certain three-dimensional shapes, their colored wrappings and ribbons as European Community trademarks. According to the court, chocolate rabbits, reindeer, bells, and mice “cannot be considered to be capable of identifying the commercial origin of the goods they designate.” The court opined that the Lindt & Sprüngli application involved shapes typical of those “presented at certain times of the year, in particular at Easter and Christmas.” The August Storck application was “made up of a combination of standard presentation elements, typical of the goods concerned,” said the court. See General Court of the European Union Press Release No. 124/10, December 17, 2010.

Hershey Company has reportedly sued Mars for trademark infringement in a Pennsylvania federal court, alleging that colors used in the packaging for Mars’s Dove peanut-butter milk-chocolate Promises® candy is too similar to what Hershey uses for its Reese’s Peanut Butter Cups®. Mars apparently filed a preemptive suit just days earlier in a Virginia federal court, asking to dismiss the Hershey complaint. Mars reportedly contends that Hershey admits it does not have exclusive rights to package peanut-butter candies in orange wrappers and that orange is commonly used in the industry as an indicator of peanut-butter flavor. According to a news source, Hershey sent a cease-and desist letter to Mars in November 2010, stating, “It can come as no surprise to Mars that Hershey, having objected to the color of the individual Dove peanut butter chocolate wrappers and filed a counterclaim to obtain a change of that color, would have a serious problem…

Darden Concepts, Inc. has filed a trademark infringement action against a TGI Friday’s franchisee located in San Diego, California, alleging that its use of “Never Ending Shrimp” to promote one of its menu offerings infringes the “Never Ending Pasta Bowl” mark that Darden has registered and used in its Olive Garden restaurants for 15 years. Darden Concepts, Inc. v. Briad Restaurant Group, L.L.C., No. 10-2077 (S.D. Cal., filed October 6, 2010). Darden alleges that use of the “Never Ending Shrimp” mark has the potential to confuse the public and will mislead consumers to believe that TGI Friday’s restaurants are affiliated with Darden’s Olive Garden and Red Lobster restaurants. Darden alleges violations of federal and state law and seeks injunctive relief, all profits and damages resulting from defendant’s infringing activities, treble damages, attorney’s fees, and costs.

A website that specializes in geek gear has reportedly drawn the ire of the National Pork Board (NPB), which apparently sent the company a cease-and-desist letter for marketing unicorn pâté as “the other white meat.” ThinkGeek.com offered the fake product as an April Fool’s prank, but later received a 12-page legal missive claiming that advertisements for “Radiant Farms Canned Unicorn Meat” infringed and diluted the board’s trademark rights. “Laughs aside, the attorneys were doing their work that they do to protect the trademark,” an NPB spokesperson was quoted as saying. Rather than oppose the cease-and-desist warning, ThinkGeek.com has since issued a public apology to NPB on the company blog. “It was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn,” stated Geeknet, Inc., CEO Scott Kaufman in a June 21, 2010, press release. “In fact, ThinkGeek’s canned unicorn…

Pennsylvania-based chocolate maker Hershey Co. has filed a Lanham Act lawsuit against Williams-Sonoma Inc., alleging that the kitchen product retailer is marketing and selling a baking pan that infringes Hershey’s “Chocolate Bar Design Mark,” a purportedly distinctive rectangle scored into 12 smaller rectangles. The Hershey Co. v. Williams-Sonoma, Inc., No. 10-1011 (M.D. Pa., filed May 12, 2010). According to the complaint, Hershey has been selling its chocolate bar for more than 100 years and registered its design in 1968. Hershey alleges that defendant’s unauthorized use of the design mark will cause confusion and that potential purchasers and consumers are likely to believe the infringing brownie pan is licensed by or affiliated with Hershey or its products. As an example of that confusion, the complaint quotes alleged online consumer comments about the baking pans: “you can make your own little hershey’s miniatures”; “It’s like a Hershey’s bar with individual brownies”; and “Whether you’re…

Responding to questions referred to it by an Italian court, the European Court of Justice (ECJ) has determined that (i) the term “Bavaria,” when used in conjunction with beer, is not a generic term, but rather is a protected geographical indication (PGI) recognized in valid proceedings by the European Commission in 2001; and (ii) beer makers outside the German region, using this designation for their products, may do so if they can prove their trademarks were registered in good faith before 2001 and will not likely confuse consumers as to product identity, “having regard to that mark’s reputation, renown and the length of time for which it has been used.”  Bavaria NV v. Bayerischer Brauerbund eV, No. C-343/07 (decided July 2, 2009). German brewers have apparently been challenging Dutch brewer Bavaria NV in courts throughout the continent, including in Italy where the case has been returned for the Dutch brewer to prove that…

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