This post is a continuation of a prior one, with key lessons for owners of an established and emerging food, beverage, and restaurant brand – all culled from recent cases. Click here for Part One.
Food and beverage companies may be precluded from obtaining registration due to third parties’ brand use for seemingly unrelated goods, and vice versa. The critical question: will consumers believe these apparently different products all come from the same source? For example, Kicking Horse Coffee was recently able to preclude another party from registering KICK ASS for clothing and energy drinks. While the Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) recognized that many coffee producers don’t offer clothing or energy drinks, and vice versa, some do. Once the TTAB found that consumers can purchase these seemingly unrelated goods (coffee, energy drinks, and clothing) from a single source, it concluded there was a likelihood of consumer confusion and found that KICK ASS could not be registered for clothing and energy drinks.
Similarly, Trek Bicycle was able to stop TREK from registering as a U.S. trademark for energy bars. Trek Bicycle owned TREK registrations for bicycles, bicycle parts and accessories, retail store services and other goods, including powders for making energy drinks; TREK STOP for vending machines selling bicycle parts and energy bars; and TREK BICYCLE STORE for retail store services. The TTAB found that while ordinarily bicycles would not come from the same place as energy bars, the evidence and testimony showed that a bicycle retail, store may sell a wide variety of consumer products over the web, sell powdered drinks both online and at retail and distribute snack bars via vending machines. The TTAB also found it was common for bike shops to sell snack bars, and that snack bars are a significant source of food for cyclists. Because of the risk that consumers would think the TREK energy bar came from or was associated with Trek Bicycle, the TTAB found that TREK could not be registered for energy bars.
Illustrating the flip side of the coin, a court case brought by Monster Energy, which sells energy drinks, was successful in stopping a party in a seemingly unrelated business—Integrated Supply Network, LLC (“ISN”)—from using the Monster Energy trademarks for automotive tools. Monster Energy owns a stylized M mark and the trademark MONSTER, as well as a black and green trade dress (more about trade dress in Lesson Four, below).
Monster Energy also sponsors NASCAR, motocross, drag racing, and other sports events, and licensed its energy drink mark (a stylized M) for autos, motorcycles, driving gloves, and clothes. A jury, clearly convinced that ISN was, in bad faith, trading on Monster Energy’s goodwill in its trademarks and trade dress, awarded $5 million in punitive damages to Monster Energy, finding that the automotive tools producer infringed Monster Energy’s trademarks. Thus, a food and beverage brand that engages in licensing activities, and sells goods beyond its core food and beverage offering, may have broad rights—far beyond food and beverage offerings—and should police and enforce those rights accordingly.
Another case illustrates that trademark rights must be carefully expanded: the Shakespeare Festival, also known as THE PUBLIC THEATER, sued a hotelier, owner of THE PUBLIC, when the hotelier began promoting theatrical performances at its hotels under the name THE PUBLIC.
The lesson here? Your trademark counsel should carefully consider the commercial context of your and others’ product offerings (including ancillary products such as clothing and licensing and sponsorship activities). These ancillary products and activities— beyond your core food, beverage or restaurant business—are critical to consider in clearing your brand for use, in guiding you as to further expansion of the brand, and in enforcing your trademark rights.
Not only words and logos are protectable. The look and feel of a product and its packaging, and the design of a restaurant, are also protectable. These protectable elements are called “trade dress.” Recent cases illustrate what can happen when a food or beverage company or a restaurant fails to consider trade dress rights.
Consider the exhibit depicted below submitted by Spangler Candy Co., the owner of the DUM DUMS lollipop trademark and trade dress, in its suit against Tootsie Roll Industries’ CHARMS MiniPops. Spangler convinced a California federal judge that it was likely to prevail on its allegations that Tootsie Roll had begun selling its CHARMS lollipops in bags “deceptively and confusingly similar” to the DUM DUMS packaging. Accordingly, Tootsie Roll was “preliminarily enjoined” (that is, prohibited for the pendency of the legal action) from selling its lollipops in the re-designed bags. Should Spangler win the case, Tootsie Roll will be permanently enjoined from using the new bags.
Also in the news recently: In-N-Out restaurant’s trademark suit over Puma’s DRIVE-THRU shoes, filed in a California federal district court. Consider these photos from the Complaint lodged by In-N-Out, which show In-N-Out’s distinctive trade dress, with its prominent use of certain colors including red and yellow, and a palm tree design, and which also show how In-N-Out has expanded this trade dress usage to clothing items:
Then consider this posting by a consumer on Instagram (one of many on social media also reproduced in In-N-Out’s Complaint) who arguably mistakenly associated the shoes with the In-N-Out burger next to them:
And further, these photos, also from In-N-Out’s Complaint of the Puma sneakers, whose insoles feature an illustration of a burger:
The visual evidence strongly suggests that Puma may have been trading off on the goodwill and reputation In-N-Out had accrued over many years of using its trade dress.
The lesson to be gleaned from the CHARMS-DUM DUMS and In-N-Out and Puma cases: carefully clear, protect, and enforce your trade dress rights. A food, beverage, or restaurant’s trade dress rights (including your own) may extend farther than you’d think!
I hope this two-part series was helpful to you. If you have any questions about trademarks, trade dress, or copyrights, please contact me at firstname.lastname@example.org.