A Bengali potato-chip maker’s application to register a design mark has drawn opposition from Frito-Lay, which argues the mark is too similar to the one it has used since 1995. Frito-Lay N. Am. v. Putul Distribs., No. 91235606 (T.T.A.B., notice of opposition filed July 17, 2017). The notice asserts that Putul’s proposed design mark for its fish, pickles and potato chips—a green and red circle bisected by a wide red and black ribbon—is likely to be confused with Frito-Lay’s, which is a “round sun or globe bisected by a banner or ribbon.” In addition to the alleged potential confusion between the marks on potato-chip products, Frito-Lay also asserts that fish and pickles are “food products that may be complementary or consumed with Frito-Lay’s goods.” Claiming priority, likelihood of confusion and dilution by blurring, Frito-Lay seeks a denial of Putul's registration application. Issue 643
Tag Archives trademark
A Wisconsin creamery selling "Irishgold" butter and the distributor of Kerrygold butter have agreed to a consent decree that will end a trademark dispute. Ornua Foods N. Am. v. Eurogold USA, No. 17-0510 (E.D. Wis., motion filed July 25, 2017). After Wisconsin began enforcing a 1950s law requiring all butter sold in the state to bear a state or federal grade mark, effectively banning all imports and out-of-state artisanal products, Wisconsin dairy Old World Creamery began selling its own butter in packaging similar to Kerrygold. Additional details about the ban and trademark suit appear in Issue 631 of this Update. Under the consent decree, the dairy will (i) continue to sell its Irish-style butter but will amend the mark to “Euro Gold” or “Euro-Gold"; (ii) withdraw its trademark application for “Irishgold” butter; (iii) refrain from using “substantially similar” packaging; (iv) not sell any Irish-themed dairy products under a mark that…
Scottish brewery BrewDog lost its battle to call one of its craft beers “Elvis Juice” when the U.K. Intellectual Property Office ruled that Elvis Presley’s estate still owns a trademark for “Elvis” beer. BrewDog released the grapefruit IPA in 2015, and the U.K. trademark owner, Authentic Brands Group, filed an infringement notice. The administrative body determined that consumers were likely to be confused by the names and that the average consumer would assume that the beer was produced by the Presley estate. See CNBC, July 12, 2017. Issue 641
The Gluten Intolerance Group of North America (GIG), a nonprofit consumer-advocacy and food-safety certification group, has filed a lawsuit against celebrity chef Jamie Oliver alleging that his website displays a designation on gluten-free recipes that infringes the group’s trademarks. Gluten Intolerance Grp. of N. Am. V. Jamie Oliver Enters., No. 17-1028 (W.D. Wash., filed July 7, 2017). GIG alleges that Oliver’s website displays the letters “GF” inside a circle near gluten-free recipes, a mark which is identical or substantially similar to one of GIG’s registered word and design marks. Claiming trademark infringement, counterfeit of a registered mark, unfair competition and false designation of origin under the Lanham Act, the plaintiffs seek injunctive relief, recall of all materials using the contested mark, a public disclaimer of connection with GIG, corrective advertising, damages and a designation of the lawsuit as an exceptional case entitling GIG to an award of attorney’s fees. …
Gizmo Beverages has filed a lawsuit against its former chair alleging trademark infringement, cyberpiracy and conversion in response to his reported refusal to surrender company-related domain names and email accounts. Gizmo Beverages, Inc. v. Park, No. 17-2037 (C.D. Cal., filed June 14, 2017). Gizmo licenses the patents for a bottle-cap closure from another company, but after defendant Don Park allegedly failed to pay $400,000 for the licensing agreement, Gizmo removed him from management. Park registered the domain name "gizmoclosure.com," one letter different from Gizmo's "gizmoclosures.com," and has continued using the domain and associated email addresses after leaving the company. Gizmo seeks an injunction, transfer of all domain names, damages and attorney's fees. Issue 639
Sugarfina, maker of “luxury boutique” candies, has filed a trademark, copyright, patent and trade dress infringement suit against Sweet Pete’s alleging the competitor relied “heavily on several design elements of Sugarfina’s distinctive packaging and marketing” of Cuba Libre®, Peach Bellini®, Fruttini, Candy Cube, Candy Concierge and Candy Bento Box® products. Sugarfina v. Sweet Pete’s, No. 17-4456 (C.D. Cal., filed June 15, 2017). Sugarfina asserts that Sweet Pete’s copied the names, “size, shape, color or color combinations, texture, graphics and sales techniques” of all six named product lines that Sugarfina packages in “museum-quality Lucite.” Sugarfina further argues that Sweet Pete’s was “a failing business prior to its radical transformation into a Sugarfina copycat.” The plaintiff seeks an injunction, treble damages, corrective advertising and attorney’s fees. Issue 639
Diageo has filed a trademark-infringement and dilution lawsuit against a competitor that allegedly mimicked Diageo’s Bulleit® bottle shape and labeling. Diageo N. Am. V. W.J. Deutsch & Sons, No. 17-4259 (S.D.N.Y., filed June 6, 2017). Diageo asserts that Bulleit® is sold in a “distinctive canteen-shaped bottle featuring embossed lettering” on the label, meant to “evoke the rugged look and feel of the American Frontier.” The complaint alleges that after W.J. Deutsch bought the Redemption whiskey product line, it redesigned the products to have a “clear canteen-shaped glass bottle,” an embossed brand name and a cork bottle cap with a black top. Claiming trademark and trade dress infringement and dilution, Diageo seeks injunctive relief, damages and attorney’s fees. Issue 638
The family of Bob Marley will receive more than $2.8 million in damages and unpaid royalties from Jammin Java Corp. in a trademark-infringement suit. FiftySix Hope Rd. Music Ltd. v. Jammin Java, No. 16-5810 (C.D. Cal., order entered May 30, 2017). The family’s companies, 56 Hope Road Music Ltd. and Hope Road Merchandising LLC, own the late musician’s intellectual property and publicity rights and sued Jammin Java after it failed to pay royalties on a license to produce Marley Coffee. Jammin Java was founded by Marley’s son Rohan, who left the company in 2008. Issue 636
A California jury found that retired University of California, Davis, professors willfully infringed the university’s patents on strawberries they developed in the school’s program. Regents of Univ. of Cal. v. Cal. Berry Cultivars, No. 16-2477 (N.D. Cal., verdict filed May 24, 2017). The professors formed a private strawberry-breeding company, California Berry Cultivars, after retiring from UC Davis. The jury found they had engaged in conversion, willful infringement, breach of duty of loyalty and breach of fiduciary duty, but released them from allegations that they interfered with the university’s business contracts or prospective economic relationships. Additional details appear in Issues 604 and 633 of this Update. Issue 636
A federal court has ruled that Sazerac Co. may take Fetzer Vineyards, Inc. to trial for its trade-dress claims but cannot seek damages because it failed to disclose damage calculations in a timely manner. Sazerac Co. v. Fetzer Vineyards, Inc., No. 15-4618 (N.D. Cal, order entered April 27, 2017). Sazerac, maker of Buffalo Trace bourbon, alleged Fetzer’s use of a buffalo and the words “bourbon barrel aged” on the label of its 1000 Stories zinfandel infringed its federal trademark and trade-dress rights. Sazerac “demonstrated a triable issue whether consumers are likely to be confused by Fetzer’s buffalo and trade dress,” the court found. However, Sazerac indicated it would provide damage calculations based on expert testimony, but it failed to propose a valid methodology until shortly before the settlement conference, when it instead presented calculations based on third-party licensing agreements. Because of the irremediable prejudice to Fetzer, the court ruled that…
