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Entries in Trademark (61)

Monday
Jan112016

Copycat Cookie = Trademark Lawsuit

Last month, Pepperidge Farm sued Trader Joe’s over copycat cookies. Screen Shot 2016-01-11 at 1.57.56 PMPepperidge Farm claims the copycat cookies look too similar to its popular Milano cookies (and feature a similar “fluted paper cup” on their packaging). See the photo to the right. Pepperidge Farm claims these similarities damage its goodwill, confuse consumers and infringe its registered trademark. Interestingly, the Milano cookie shape is a registered trademark [U.S. Registration No. 3,852,499].

A few interesting details:

  • Milano cookies are famous cookies that Pepperidge Farm started selling in 1956.
  • Pepperidge Farm is a successful company, makes lots of money selling Milano cookies and can afford this litigation. (Trader Joe’s can likely afford this too).
  • The packaging of Trader Joe’s cookie features a picture of its cookies displayed in fluted paper cups (which is how Milano cookies are sold); however, the interior packaging is actually a plastic tray.
  • The two cookies are not the exact same shape. Trader Joe’s cookies are more rectangular.

This last point may be difficult to overcome. The court may be Screen Shot 2016-01-11 at 1.46.06 PMreluctant to enforce a product design trademark for a sandwich cookie when the allegedly infringing cookie is not the same shape.  It will be interesting to follow this case and see what happens next.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: a copy of the Complaint filed in December at http://ia601509.us.archive.org/4/items/gov.uscourts.ctd.110383/gov.uscourts.ctd.110383.1.0.pdf; earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a Reuters news article on the lawsuit: Pepperidge Farm sues Trader Joe’s over Milano cookie at http://www.reuters.com/article/us-traderjoes-pepperidgefarm-lawsuit-idUSKBN0TN1X020151205; @iplegalfreebies and www.iplegalfreebies.wordpress.com.

 

Monday
Sep072015

CITYSTICKS & POPSICLE tale of two trademarks

CITYSTICK picCITYSTICKS & POPSICLE are two different trademarks for tasty frozen treats.  These two trademarks are owed by two different companies and are both registered with the USPTO.  USPTO trademark registration grants the owner of each trademark exclusive rights to use the registered trademark when selling, advertising and promoting their frozen treats.  This means that the words CITYSTICKS & POPSICLE are off limits to any other person or company selling frozen treats.  For example, if another person or company uses either of the trademarks to sell or advertise competitive goods without permission of the trademark owner they may be infringing the trademark and might be asked by the owner to stop using the trademark (i.e. to cease and desist from infringing the trademark).

POPSICLE is the older of these two trademarks and it’s no coincidence that the CITYSTICKS packaging pictured to the left and below does not use the trademarked term POPSICLE.  Instead the packaging reads, “ice pops with personalities.”  (As you can see, I quickly ate half the CITYSTICKS ice pop before I thought to photograph it for this post.  It was tasty).CITYSTICKS USPTO screen shot

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: more on the POPSICLE trademark and protecting exclusive trademark rights  at http://wp.me/p10nNq-3t, other posts on exclusive trademark rights at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/trademark-exclusive/; USPTO (U.S. Patent & Trademark Office) resources at www.uspto.gov; #trademark, #branding, #valueyourbrand @iplegalfreebies and www. iplegalfreebies.wordpress.com.

Tuesday
Jul142015

Using the Registered Trademark Symbol: ®

trademarks on the streetWalking down the block today in New York City, I noticed a dozen famous trademarks: WHOLE FOODS MARKET (store sign), NYC TAXI (decal on a cab);  LOUIS VUITTON (purse), 7 ELEVEN (store sign), CON EDISON (on a service truck), UNITED STATES POSTAL SERVICE (on a blue mail box), DUNKIN’ DONUTS (store sign), POLO RALPH LAUREN (logo on a man’s shirt), NIKE (swoosh on a shopping bag); HAAGEN-DAZS (on an ice cream delivery truck); GAP (store sign) and MTA (logo on a poster announcing a subway update).

Once a trademark has been registered with the USPTO, the trademark owner is vested with a bundle of exclusive rights to use the trademark AND the owner also has the right to use the coveted Registered Trademark symbol: ®.  The photo-collage inserted into this post points out several uses of the ® symbol that I noticed out on the street.

Here is a brief excerpt from the United States Patent & Trademark Office’s website on using the ® symbol:

[Y]ou may use the federal registration symbol “®” only after the USPTO actually registers a mark , and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

Registered trademarks are all over the streets of New York City!

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: Other blog posts on using trademark symbols at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/trademarks-tm-sm/; USPTO (U.S. Patent & Trademark Office) resources at www.uspto.gov and www.uspto.gov/faq/trademarks.jsp#_Toc275426682; INTA (International Trademark Association) fact sheet on trademark use at http://inta.org/TrademarkBasics/FactSheets/Pages/TrademarkUseFactSheet.aspx; @iplegalfreebies and www.iplegalfreebies.wordpress.com.

Wednesday
Apr152015

Epic Launch -> of Hillary’s Trademark and Campaign

Launching a trademark on Sunday night and having it featured in a New Yorker cartoon the next day Screen Shot 2015-04-15 at 10.12.23 AMmay be a trademark dream come true.  It’s Hillary Clinton’s 2016 campaign logo (featuring an H and a right arrow) that has created the buzz of attention.

The Washington Post ran an article on Monday that compiled public comments, reactions and look-a-likes to Hillary Clinton’s 2016 campaign logo.  An interesting look-a-like logo mentioned in the article caught my attention: a logo for a defunct English supermarket chain called “Hillards” that had a similar H-arrow logo. (Pictured in the bottom right corner of the Hillards advertisement.)  The good news for Hillary’s campaign is that this look-a-like should not block nor create any issue with her new campaign logo.  This is because: Screen Shot 2015-04-17 at 2.46.02 PM

  1. The supermarket trademark was not used in the United States. (Trademark rights are acquired by use of the trademark in a particular geographic region and can be registered in a specific country or countries.  Once registered, continued use of the trademark is required to maintain the registration); and
  2. The trademark does not appear to be “in use” any longer in any country due to a reportedly hostile takeover. (Trademark rights are sustained by actual use of the trademark to sell particular goods and/or services.  Failure to continuing using a trademark in commerce to sell particular goods and/or services “kills” a trademark).  Screen Shot 2015-04-15 at 10.11.51 AM

Personally, I like Hillary Clinton’s 2016 campaign logo.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: Basic facts about trademarks issued by the USPTO at http://www.uspto.gov/sites/default/files/trademarks/basics/BasicFacts.pdf; more posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; The UK Intellectual Property Office with trademark search options at https://www.gov.uk/government/organisations/intellectual-property-office; @iplegalfreebies and www.iplegalfreebies.wordpress.com.

Friday
Apr032015

Give me original British Cadbury or give me death

Easter chocolates (and the Easter chocolate trademarks) are big business.  It’s estimated that 50 millionImageAgentProxy Cadbury Creme Eggs will be sold in the U.S. this year.  Who is selling the Cadbury Creme Eggs in the U.S. and how they taste on this side of the pond is at issue.  Evidently, Hershey owns the rights to make and sell Cadbury Creme Eggs (probably via an exclusive trademark licensing deal with Cadbury U.K.).  As per a recent PBS article, Hershey paid $300 million dollars for these trademark rights back in 1988 and has been enforcing the exclusive distribution rights to the dismay of British Cadbury loyalists.  Hershey’s enforcement has ruffled feathers of small shops that import and sell the British Cadbury chocolates.

Hershey’s position is that small shops (or shops of any size) should purchase the Cadbury Creme Eggs through them because they “own” the right to make and sell the chocolates here in the United States.  The British Cadbury loyalists who import and sell Cadbury made in the U.K. want to have their British Cadbury and eat it too!  It will be interesting to see how this dispute plays out.

The International Trademark Association provides a fact sheet on trademark licensing at: http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkLicensing.aspx

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: Why some Cadbury-lovers are bitter that they can’t buy their favorite sweets at http://www.pbs.org/newshour/tag/hershey/; more posts on exclusive trademark rights at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/trademark-exclusive/ @iplegalfreebies and www.iplegalfreebies.wordpress.com.