“Chicago Mix:” Generic or Trademark?

March 3, 2015

By Lora Friedemann

The heat is rising in a battle that pits small popcorn manufacturer Candyland, Inc. against industry giants Cornfields and Snyder’s-Lance. The kernel of the argument is the term “Chicago Mix.” Candyland registered the “Chicago Mix” trademark over 20 years ago, and claims that others using the mark are infringers. Cornfields and Snyder’s-Lance disagree, and have asserted that “Chicago mix” is the generic name for a blend of caramel, cheese and butter popcorn.

A mark can become generic (and therefore unprotectable) if the trademark owner fails to enforce it. A mark can also become generic through changes in consumer perception independent of the trademark owner’s conduct.

When trademark owners sue they should expect vulnerable marks to be attacked. Whether due to a failure to police the mark or a change in consumer perceptions over time, a finding that “Chicago Mix” is generic seems the likely outcome in this fight.

In addition to popping its trademark bubble, Candyland stirred up trouble by saying derogatory things in emails and blog posts. Candyland called is opponents “corporate sharks” out to “steal” the mark, and alleged that the opponents’ products are “over-priced, bad tasting, unappetizing, [and] tainted.” Unsurprisingly, Candyland’s statements resulted in counterclaims for defamation, deceptive trade practices and false advertising. The court dismissed some of the counterclaims, but allowed claims based on the “stealing” accusation to proceed.

The lessons here are two-fold. First, if you bite off too much you may choke. Expect an aggressive response from an opponent, especially if your trademark is vulnerable. Second, be professional in public forums when you are a party in a lawsuit, or better yet, keep your mouth shut.

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