Peeled, Inc. Seeks Injunction, Damages in Trademark Infringement Suit Against Peeled Fruit LLC
Peeled, Inc. (“Peeled”) www.peeledsnacks.com, a company specializing in healthy, natural snack foods including dried fruits and dry roasted nuts, recently filed a trademark infringement suit in the United States District Court for the Southern District of New York against Peeled Fruit LLC (“Peeled Fruit”) www.simplypeeled.com. Peeled Fruit sells frozen soft-serve fruit, with fresh fruit toppings. Peeled alleges that Peeled Fruit is attempting to cash in on the brand awareness and goodwill associated with Peeled’s marks.
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Peeled began marketing its products under the marks “Peeled,” “Peeled Fruit,” and “Peeled Snacks” as early as 2004. Since that time, Peeled’s marks have received extensive coverage in television and print media, including receiving a coveted spot on Oprah’s O List as one of Oprah’s favorite afternoon snacks, and receiving the 2008 “Best of Food” award from Health Magazine. Peeled registered the mark “PEELED SNACKS” on January 10, 2006 with the United States Patent and Trademark Office..jpg)
Peeled alleges that Peeled Fruit not only knew about Peeled’s use of the marks, Peeled Fruit “adopted the trademarks with the intent to trade and capitalize on the goodwill generated by Peeled, Inc.’s extensive and widespread use of its trademarks, as well as its extensive sales, advertising and consumer acceptance and recognition.” Peeled argues that the similarities between the products sold by both companies make the shared use of the marks likely to cause confusion, mistake and deception among consumers.
5-Hour Energy v. 8-Hour Energy: Monopolization Claim Flops
By Guest Blogger Joseph Eckhardt
In an unfair competition suit under 15 U.S.C. § 1125, the king of the two-ounce energy shot, 5-Hour Energy, is suing the makers of 8-Hour Energy in the Eastern District of Michigan, claiming that 8-Hour Energy falsely associates itself with 5-Hour Energy. 8-Hour Energy has tried to strike back with a monopolization claim, arguing that 5-Hour Energy has engaged in a number of anticompetitive tactics to drive away competitors like 8-Hour Energy, and 6-Hour Energy, which 5-Hour Energy sued in 2008.
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Anyone who has recently set foot in a convenience store or watched late night cable television knows how valuable the energy drink business has become. To get an idea of how this market has grown, take a look at the wall of energy drinks displayed at thescreamingenergy.com product review web site. Perhaps the most valuable spot in that market is in the two-ounce “energy shot” space, on the counter next to the cash register, where customers are willing to pay $3.50 for two ounces of an elixir that will “help you feel sharp and alert.” (By comparison, a consumer will seldom pay more than 99 cents for a 12 ounce can of caffeinated cola.) And the consensus is that 5-Hour Energydominates this category.
The 8-Hour Energy defense team may have a good argument that 5-Hour Energy is the king of the convenience store counter, but the Eastern District of Michigan issued an Order last week slapping down 8-Hour Energy’s monopolization claim. 8-Hour Energy argued that 5-Hour Energy engages in anticompetitive tactics to control the market, but failed to convince the court that those tactics actually harm 8-Hour Energy. For example, the court noted that anything 5-Hour Energy did to exclude 6-Hour Energy from the market couldn’t have harmed 8-Hour Energy. Ultimately, 8-Hour Energy should be able to argue that any anticompetitive conduct is relevant to prove that 5-Hour Energy has harmed competition – this may be an issue that 8-Hour Energy can exploit on appeal.
The court’s order provides a good example of the risks associated with raising antitrust counterclaims. Here, the Eastern District of Michigan dismissed 8-Hour Energy’s monopolization counterclaim for failure to convincingly plead the claim. If 8-Hour Energy somehow revives the claim, the next hurdle will be definition of the relevant market. Is there an exclusive market of 2-ounce energy drinks? If Red Bull, Coca Cola, or coffee are reasonable substitute “energy drinks,” 8-Hour Energy’s monopolization case doesn’t have a chance.
Energy Drinks and Nutrition Bars too Related to Avoid Consumer Confusion
The Trademark Trial and Appeal Board (TTAB) recently issued a decision that highlights the importance of not assuming that goods that fall in different international trademark classes are unrelated in a likelihood of confusion analysis. In In re Spirits of the USA, LLC (not citable 4/21/10), the TTAB held held that energy drinks (class 32) and nutrition bars (classes 5 and 30) are too related to avoid a likelihood of consumer confusion when used in connection with the mark "Runner". The TTAB concluded that energy drinks and nutrition bars both provide energy and are commercially related products that are sold in the same channels of trade to the same classes of consumers, so confusion is likely.
How can you know if the relationship between the products you plan to list in your trademark application and those in an existing third party registration are likely too close? Do what examining attorneys at the USPTO do: search for third party registrations that list both your products and the products listed in the registration in question. If a number of these third party registrations exist, the examining attorney is likely to cite them in a refusal claiming that this evidence suggests that the listed products are of a type which may emanate from a single source and therefore are likely to cause confusion in the marketplace. (See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993)).
Fewer International Trademark Filings in 2009 Parallels Global Economic Downturn
Did you cut down on new branding projects last year to save money? If you did, you're not alone. The World Intellectual Property Organization (WIPO) reported that international trademark filings last year decreased by 16 percent, and U.S. filings dropped more than 13 percent from 2008. In 2009, 35,195 international trademark applications flowed through WIPO's system, compared with 42,075 applications in 2008. USPTO trademark filings for 2009 dipped to 352,051 applications from 401,392 in 2008.
While most countries experienced fewer filings, filings in some countries increased. Filings from Japan rose a modest 3 percent, while filings in the South Korea increased by 33 percent and Singapore by 21 percent. WIPO Director General Francis Gurry noted that demand for intellectual property rights had reached unprecedented levels prior to the economic crisis and we have every reason to believe that international trademark activity will pick up as economic growth solidifies and broadens. Trademark filings are already up in 2010. Hopefully the economy will follow suit.
Mark "Perfecting Serum" found not descriptive for skin moisturizer
Having a policing policy helped the owner of the mark “Perfecting Serum” for skin moisturizer overcome an examiner’s charge of mere descriptiveness. Because the owner was able to show that it had taken steps to prevent third parties from using the mark other than to identify the owner’s product, the Trademark Trial and Appeal Board reversed the refusal to register the mark. The Board also found that the term “perfecting” was not commonly understood by consumers as describing a quality or feature of skin moisturizer. This case reaffirms the need to have a strong policing policy for trademarks both prior to registration and post registration.
What's in a name: "Valverde" is not primarily merely a surname
To increase the likelihood of successful trademark registration with the U.S. Patent and Trademark Office, applicants are often advised to select marks that are fanciful, arbitrary or suggestive, and to screen those marks in order to identify other potentially conflicting marks. Applicants may also want to consider screening their marks to confirm whether the mark would be perceived by consumers as a surname.
Spumador S.P.A. filed an application to register the mark “Valverde” for mineral waters and other beverages, but the examining attorney refused registration of the application on the ground that the proposed mark was primarily merely a surname. On appeal, Board found:
- “Valverde” was a surname and that it was not a rare surname;
- “Valverde” was Spanish for “green valley”; and
- There was no support for Spumador’s argument that “Valverde” was recognized by consumers as a geographic location and, to the extent that there was any recognition of “Valverde” as a location, it could support the conclusion that “Valverde” would be viewed as a surname because locations are often named after individuals.
In short, the Board found the evidence of “Valverde” as a surname was greater than the evidence that the term had any other significance. However, the Board also found that “Valverde” looked and sounded like a foreign word rather than surname. Thus, it concluded that “Valverde” was not primarily merely a surname.
Although Spumador prevailed in this case, applicants should consider whether their potential marks would be perceived primarily as a surname by consumers.
