Brand BattlesSM
Trademark Disputes of Interest
By: DEAN R. KARAU
December 2008
Trademark disputes pit brand against brand, and can be some of the most contentious litigation.
Here are snapshots of some cases which piqued our interest, not necessarily because they will illuminate great legal principles, but because they just seem darn interesting.
Another Month, Another Food Fight: Pinkberry v. Yoberry
In September, we reported on Pinkberry, Inc., suing Yogiberry, Inc., for trademark infringement. See Brand Battles – More Food Fights: Pinkberry v. Yogiberry.
Pinkberry, a franchisor of frozen yogurt stores located in California and New York, owns U.S. trademark registrations for the word mark PINKBERRY and for its logo, for restaurant services, frozen yogurt, and smoothies.
This time, Pinkberry has gone after Yoberry, Inc., filing a trademark infringement suit in the state of Washington against the Seattle-based Yoberry, Inc., frozen yogurt shop.
Pinkberry alleges that Yoberry’s design mark is confusingly similar with Pinkberry’s design mark.
It looks like if you sell yogurt topped with berries and use a berry design to do so, you, too, may be invited to join Pinkberry in court.
Pinkberry, Inc. v. Yoberry, Inc., No. 08-1360 (W.D. Wash.).
Producer of Little House On The Prairie Sue Owners of A Real Little House On The Prairie
Friendly Family Productions, producer of the long-running television series, Little House on the Prairie, based on the best-selling book by Laura Ingalls Wilder, filed a lawsuit against a Kansas Little House on the Prairie museum where Wilder once lived. Friendly Family asserts trademark infringement, unfair competition, and trademark dilution.
According to documents filed in the suit, Friendly Family sued the museum because the producers of a Little House on the Prairie musical which opened at the Guthrie Theater in Minneapolis were concerned about finalizing a merchandizing deal with Friendly Family due to the Kansas museum’s claim to rights in the Little House on the Prairie trademark. Friendly Family is seeking an injunction prohibiting the museum from using the trademark and damages.
The museum owns two trademark registrations for Little House on the Prairie. However, Friendly Family claims ownership of the trademark, merchandizing rights, and the right to exploit the book on television, motion pictures, and theme parks.
According to its owners, the museum, where Ingalls lived between 1869 and 1871, attracts between 12,000 and 15,000 visitors annually. Included at the museum is a replica of the Ingalls’ log cabin, pictured on the right.
Sailboat Charter Business In Hot Water Over Use of Famous Sauce Name
McIlhenny Company is the owner of the famous TABASCO brand pepper sauce. However, in addition to U.S. trademark registrations covering its sauce, McIlhenny also owns registrations for “sponsorship services” and for “boats.”
In 2004, Colby Fisher wrote McIlhenny asking it to sponsor his sailboat in amateur racing. McIlhenny said no, and demanded that Fisher remove the name Tabasco from his boat before entering any races.
Seems that Fisher continued using the name Tabasco for his boat, and also began providing charter sailing excursions, promoted on his website. Despite another cease and desist letter, Fisher continued using the Tabasco name and his domain name, www.sailtabasco.com.
As a result, McIlhenny filed suit, alleging trademark infringement, unfair competition, and dilution, and asking for an injunction, damages, costs, and attorneys’ fees.
McIlhenny Company v. Fisher, Case No. 08-cv-10089 (S.D. Fla.).