After Vermont-based folk artist Bo Muller-Moore decided to apply for a federal trademark to protect his “Eat More Kale” T-shirt design, fast food chain Chick-fil-A reportedly accused him of infringing its “Eat Mor Chikin” trademark. The kale design has apparently caught on with consumers, who pay $25 each for the T-shirts and have purchased a sufficient quantity for Muller-Moore to support his family. With powerful allies such as Vermont Governor Peter Shumlin (D), who reportedly said, “Don’t mess with Vermont. Don’t mess with kale. And Chick-fil-A, get out of the way because we are going to win this one,” Muller-Moore has vowed to defend the claim. Publicity about the fracas has apparently generated a rash of sales, which Chick-fil-A hopes to stop; the company has also apparently sought an order requiring Muller-Moore to turn over his website, eatmorekale.com. See NPR.org, December 6, 2011.
Tag Archives trademark
Without disclosing any settlement details, Hormel Foods Corp. and a Netherlands-based company have secured a court order dismissing trademark infringement claims involving the labels for canned meat products SPAM® and Prem®. Hormel Foods, LLC v. Zwanenberg Food Group (USA), Inc., No. 11-00774 (D. Minn., order entered November 1, 2011). Additional information about the case appears in Issue 388 of this Update. Hormel brought the action, contending that the defendant had violated the Lanham Act by selling Prem canned meat with a copycat label using Hormel’s distinctive label colors. According to a news source, Prem filed a counterclaim, alleging that the two color label is not distinctive or protectable and that the U.S. Patent and Trademark Office improperly registered the trademark in May 2011. See Law360, November 1, 2011.
Fage Dairy Processing Industry, S.A. has filed a lawsuit seeking to overturn the Trademark Trial and Appeal Board’s refusal to register the yogurt maker’s “Fage Total” trademark and a declaration that its use of the mark does not infringe any claimed right of General Mills, which makes Total® breakfast cereals. Fage Dairy Processing Indus., S.A. v. General Mills, Inc., No. 11-1174 (N.D.N.Y., filed September 30, 2011). According to the complaint, the board’s ruling is replete with factual errors. The complaint also asserts that Total® cereal and Fage Total yogurt co-existed in U.S. markets for 13 years “without a single instance of actual confusion arising from the parties’ use of their respective marks.” Fage alleges that the defendants, “suddenly and without warning” brought a federal trademark infringement lawsuit against it in mid-September, “seeking draconian damages.” That suit was apparently filed two days after the board refused to register Fage’s marks.
The European Union Court of Justice has determined that Anheuser-Busch and Czech competitor Budejovicky Budvar may both use the Budweiser trademark in the United Kingdom. Budejovicky Budvar v. Anheuser-Busch Inc., No. C-482/09 (ECJ Sept. 22, 2011). Emphasizing the exceptional circumstances of the case, the court found that because the companies used the marks in good faith for nearly 30 years and because U.K. consumers “are well aware of the difference between the beers of Budvar and those of Anheuser-Busch, since their tastes, prices and get-ups have always been different,” the company that owns the earlier trademark cannot “obtain the cancellation of an identical later trade mark designating identical goods.” The court relied on European law to decide the case and in so doing rejected an advocate general opinion that indicated the issue must be decided as a matter of national law. Information about a related decision appears in Issue 388 of…
POM Wonderful LLC, which has created a market for pomegranate juice beverages and other products, has sued Backside Beverages, LLC, alleging that the company has infringed POM’s trademark with its Pompis energy drink. POM Wonderful LLC v. Backside Beverages, LLC, No. 11-760 (D. Utah, filed August 22, 2011). POM’s complaint includes a comprehensive description of the actions it has taken and the $300 million it has spent to promote and protect its brand and trademarks since first introducing fruit-based beverages in 2002. According to the complaint, the defendant has tarnished POM’s registered trademarks “because ‘pompis’ is a slang Spanish term for ‘backside,’ that is, ‘backside’ of a person. In English, ‘pompis’ is equally derogatory,— combining the term POM and the term ‘pis’ which phonetically sounds like ‘piss’.” POM contends that such derogatory use of its marks intentionally trades on its goodwill “while at the same time tarnishing the POM brand.”…
Alleging trademark infringement and unfair competition, Vienna Beef Ltd. has sued a descendant of one of its founders and the competing hot dog company he established in 1986. Vienna Beef Ltd. v. Red Hot Chicago, Inc., No. 11-03825 (N.D. Ill., filed June 6, 2011). When Scott Ladany, whose grandfather started Vienna Beef, left that company in 1983, he purportedly signed a severance agreement promising not to share Vienna’s recipes and acknowledging their status as trade secrets. According to the complaint, Ladany made “few inroads into Vienna’s dominance in the marketplace” for the next 25 years and then launched a marketing campaign on behalf of Red Hot, referring to the family history of making “Chicago’s finest hot dogs for 118 years.” He also allegedly referred to “a tradition that’s been handed down through four generations of our family.” The plaintiff contends, “The only way that he can claim that he has…
A New York bakery and its shareholder have filed a trademark infringement action against the Food Network, claiming that its proposed “Tough Cookies” show would confuse consumers. One Tough Cookie, Inc. v. Scripps Networks Interactive, Inc., No. 11-03675 (S.D.N.Y., filed May 31, 2011). According to the complaint, the Food Network has adopted “Tough Cookies” as the name of a “reality” TV series that will air in July 2011. It is apparently based on a “specialty bakery in New Jersey” called Crazy Susan’s Cookie Co. The plaintiffs allege that they are nationally known for “concentrating in ‘edible art’ in the form of cakes, cookies, and other pastries and baked goods” and registered their One Tough Cookie® mark in 2006. The plaintiffs also allege, “Each time the ‘Tough Cookies’ television show airs, plaintiffs’ website and web server will be compromised due to television fans attempting to find the ‘Tough Cookies’ television show…
A federal judge in Florida has reportedly granted a motion for permanent injunction in a trademark infringement case involving two “never-ending” restaurant promotions. According to media sources, Darden Concepts Inc., which owns Olive Garden and Red Lobster, filed an October 2010 complaint alleging that a TGI Friday Inc. franchisee with outlets in seven states had infringed on its “never-ending pasta” and “all you can eat” shrimp slogans by advertising a “never-ending shrimp” deal. Under terms of the settlement, TGI Friday’s must halt its “never-ending” promotion, which evidently ran as 630 TV spots in anticipation of a national campaign. See Law360, June 6, 2011.
Celestial Seasonings has filed a complaint against Mexican and Texas companies that are allegedly infringing its Sleepytime trademark with a tea product sold under a “Sleeping Time” mark. The Hain Celestial Group, Inc. v. Royal Tea S.A. de C.V., No. 11-2504 (E.D.N.Y., filed May 24, 2011). According to the complaint, Celestial began registering its marks for tea and dietary supplements in 1975. Contending that the defendants’ Sleeping Time mark is “confusingly similar,” Celestial alleges that the defendants were fully aware of Celestial’s rights to the Sleepytime mark because they tried to cancel Celestial’s Mexican trademark registration. The complaint alleges trademark infringement, trademark dilution and unfair competition under federal law, and related counts under state law. The plaintiff seeks a permanent injunction, destruction of infringing inventory and advertising, treble damages, costs, and attorney’s fees.
Rare Breed Distilling has filed a trademark infringement action in a Kentucky federal court alleging that Jim Beam Brands’ use of “Give ‘Em the Bird” in connection with its Old Crow bourbon whiskey “is likely to confuse and deceive consumers and purchasers of bourbon whiskey products.” Rare Breed Distilling LLC v. Jim Beam Brands Co., No. 11-292 (W.D. Ky., filed May 13, 2011). Rare Breed has apparently used “Give Them the Bird,” which evolved into “Give ‘Em the Bird,” since 2006, in connection with its Wild Turkey® bourbon whiskey products. The plaintiff alleges that Jim Beam adopted identical marks for use and filed a still pending application to register the mark in March 2010. According to the complaint, Jim Beam has refused to acknowledge Rare Breed’s prior rights to the mark and continues to use it. Alleging federal trademark infringement and unfair competition, and common law unfair competition, the plaintiff seeks…
