Panera Bread and the Great Harvest Bread Co. will not be breaking bread together anytime soon. To the contrary, Great Harvest recently filed a trademark lawsuit against Panera over Panera’s “food as it should be” campaign, which is meant to reflect Panera’s philosophy of clean ingredients and menus based on whole foods.
The USPTO recently issued an Office Action refusing trademark registration for the trademark “REDSKINS HOG RINDS” for use in connection with pork rinds. The examiner cited Trademark Act Section 2(a) as the basis of the refusal, stating that the applied-for mark consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols. The decision further cited no less than five dictionary definitions of the word “Redskins” which refer to the name as either offensive, slang, disparaging or taboo.
If you are a trademark licensor, your agreements with licensees undoubtedly contain quality control provisions, including the right to review how your licensee uses your mark. Quality control protects consumers against misleading uses of trademarks and ensures that licensees offer products and services that live up to the quality associated with the brand. Additionally, a license without quality control is considered a “naked license,” which has been held to be inherently deceptive and can result in the trademark being deemed abandoned. But does exercising quality control expose a licensor to liability for infringement of third party trademarks by its licensee? In the case of Gibson Guitar Corp v. Viacom International Inc. and John Hornby Skewes & Co., Ltd., Gibson Guitars made that argument, but ultimately failed.
New York is not shy when it comes to protecting its world-famous “I ♥ NY®” trademark. In its most recent attempt to enforce its rights in the mark, the Empire State Department of Economic Development had its enforcement agency send a letter to the owners of Everyman Espresso, a New York City coffee shop, demanding that they cease use of the logo. Part of the Everyman Espresso logo plays off of the iconic New York trademark by substituting a coffee cup for the heart.
The letter claimed that, “Everyman Espresso’s unauthorized and confusingly similar use of the I ♥ NY® logo” violated federal trademark law and implied “a misleading designation of source, origin, endorsement, sponsorship or approval by the New York State Department of Economic Development of your merchandise.”
Rather than risk costly litigation, Everyman decided to cease all use of the mark. But that wasn’t enough for New York. The state wanted compensation, and its lawyer demanded that Everyman provide an accounting of gross revenues generated during the period when the I ♥ NY trademark was used, to help set the appropriate penalty. Everyman is complying with the request, but is not pleased about it, and has been quoted as saying, “Basically, it’s extortion.”
Many lawyers would argue that the Everyman logo is not infringing, causes no likelihood of confusion and does not dilute the state’s mark. However, it is unlikely that New York will ever slow down its efforts to keep third parties from using its signature mark, no matter how much they vary it. Last year alone, more than 100 letters went out to alleged infringers.
For third parties thinking of developing a mark which plays off of “I ♥ NY,” it’s best to think twice. As the Everyman case demonstrates, defending against a strong trademark owner with such a robust enforcement policy is more of a challenge than a typical small business would likely want to take on.
Tiffany and Company, a wholly owned subsidiary of Tiffany & Co. (NYSE: TIF) recently filed a lawsuit against Costco Wholesale Corporation to prevent Costco from selling counterfeit diamond engagement rings under the Tiffany brand and trademark. The complaint was filed in the U.S. District Court for the Southern District of New York and alleges trademark infringement, dilution, counterfeiting, unfair competition, injury to business reputation, false and deceptive business practices and false advertising.
Product placement in Hollywood movies is a huge industry, and getting your product featured in a hit can be a boost to business and worth every penny spent. But what happens when a filmmaker includes your product in his or her movie, for free, but portrays the product in a negative manner?
A few months ago we wrote a blog post on Nestlé’s battle with Kraft over the unique purple color of Cadbury chocolate bar wrappers. While Nestlé lost the battle over color, it recently won the battle over shape.