Pillsbury Doughboy vs. My Dough Girl: Is it trademark infrigement?

Hello Everyone:

Have you heard about Pillsbury Doughboy vs. My Dough Girl. Pillsbury sent a cease and desist letter to Tami Cromar owner of My Dough Girl cookie bakery asserting her "My Dough Girl" trademark was too similar to the trademarked "Doughboy." Apparently, Ms. Cromar applied for registration of the mark with the USPTO and Pillsbury immediately sent her a cease and desist. As I have discussed previously, trademark infringement occurs if 1) a trademark owner can assert priority to use the mark (1st to use the mark in commerce) and 2) there is a likliehood of confusion between the priority mark and the subsequent mark. Pillsbury stated "the application was for categories in which we operate, including cookies and refrigerated dough products nationally. We needed to protect our trademarks — and we did." Ms. Cromar sells fresh baked cookies and refrigerated dough cookies.

Are the marks too similar?

Well that is debatable. There are many factors that are assessed to determined if two marks are likely to cause confusion in the marketplace because they are too similar. One is are the marks similar in sight, sound, and meaning. One could argue that because "Doughboy" and "My Dough Girl" have the same meaning as both companies are in the cookie and refrigerated cookie dough business. Also, one could argue "Dough Girl" is too similar in sight and sound to "Doughboy." However, I could also argue the three words "My Dough Girl" together are unique enough not to infringe "Doughboy" and they are not similar in sight and sound. But I believe because the classifications and products are the same, Pillsbury did not want to take any chances.

Similar Doughboy registered trademarks

Ms.Cromar stated she did not understand why Pilsbury was picking on her as there are several companies with the "Doughboy" trademark. I did review registered "Doughboy" trademarks with the USPTO and either they were established well before Pillsbury's "Doughboy" trademark or the marks are in unrelated categories. Two similar trademarks can co-exist if the product or services are unrelated and are categorized in entirely different classifications. The only instance a company can prevent registration of a similar trademark in an unrelated classification is when the company has a very famous trademark and they can assert Dilution, i.e., the similar trademark is diluting the famous brand.

What is next for My Dough Girl

Ms. Cromar agreed to select another trademark rather than fight Pillsbury. But all is not lost. The considerable amount of publicity she has received from the media coverage will no doubt boost her sales at her physical bakery and her online business. She does have a Facebook Fan Page of supporters who want her to fight Pillsbury. I did visit her website and her cookies are indeed unique and look very tasty. If this controversy had not surfaced, she would just be a locally known bakery in Utah..Now her business is a nationally known and famous bakery. Not a bad trade off.

Is Google Winning the Battle in Key Words Advertising Litigation?

Google may have won the battle in Europe in regards to allowing advertisers to purchase trademarks as key words in their Google Ads program. Recently, the highest court in France found Google not liable for trademark infringement in the Google vs. LVMH case and referred the case back to the France Court of Appeals.

Previously, the lower court ruled Google was liable for trademark infringement for this practice. I previously wrote about this practice here. Basically Google allows a competitor of a company with a well established trademark like "Catepillar", to purchase the trademarked "Catepillar" as a key word. When a search is executed for the competitor company on Google, the competitor's link may show up before "Catepillar's" own link. Doesn't sound fair, does it? Many companies have either complained or sued Google for this practice and the courts have been split. In the U.S. one circuit agrees it is trademark infringement, while another circuit disagrees. However, in Europe, Google seemed to be having a harder time defending this practice as the courts have pretty much sided with the trademark owners.

The French lower court concluded a "likliehood of confusion" existed when consumers searched for the rightful trademark owner's products and instead a search produced a competitor's or imitator's products. I previously covered this ruling here. However, the higher court disagreed.

Where does this leave Google? Well Google feels like this decision was in their favor and believes and I quote "All cases which get ruled upon by the French Supreme Court go back to the French Court of Appeal as matter of course," Ben Novick, a Google spokesman said. Google further argues, "The French Court of Appeal will need to apply the law as laid down by the Cour de Cassation today. The Cour de Cassation has ruled that Google is not guilty of trade mark infringement, unfair competition or misleading advertising. All else is 'ifs' and 'buts."

However, LVMH feels differently. They welcome the case being remanded to the Court of Appeals and believes the French Court of Appeals "will enable the Paris Court of Appeals to rule on Google's civil liability when using trademarks without the trademark owner's authorization. The Court of Appeals will determine any potential wrongdoing committed by Google to the detriment of Louis Vuitton"

It will be an interesting outcome.

Likelihood of Confusion: What Is It?

Hello!

Today I am going to discuss the second requirement to prove trademark infringement: likelihood of confusion.  

Per my previous post, to prove trademark infringement one must show 1) priority of the trademark's use in commerce and (2) the use of similiar trademarks in commerce is likely to cause confusion among the relevant consuming public.

The courts have established an 8 part test to prove likelihood of confusion.  The court balances these 8 factors to determine if the use of two similar trademarks in commerce is causing confusion among the relevant consuming public. I will explain each factor below:

1. The strength of the mark.  Basically, how strong or distinctive is the trademark to the consuming public? The strongest marks are those that are arbitrary and fanciful.  This means that the mark does not merely suggest or describe the product or service. For example, Kodak is the trademark for a line of cameras and film.  Kodak does not suggest or describe the products: cameras and film.  However, we have come to associate Kodak as a producer of quality cameras and film.  

2. The similarity of the marks in sight, sound and meaning. For example, Victora's Secret is the trademark associated with premium lingerie.  However, another company comes along and its trademark is Vickey's Secret and this company also sells premimum lingerie.  These two trademarks are similar in sight, sound, and meaning

3. The similarity of the goods or services sold under the trademarks.  I will go back to my Victoria's Secret example.  The goods and servies sold under the trademarks, Victoria's Secret and Vickey's Secret, are so similar they are identical.

4. The similarity of the distribution channels and customers for the goods or services at issue.  Are the products being distributed by the same entities? Are the products sold in the same markets? Are both products being sold through the same channels, i.e., online, in-store, or catalog?

5. The sophistication of purchasers and the expense of the product or service at issue.  For example, frequent buyers of Ralph Lauren Purple Label would be less likely to confuse RLA Purple Label with Ralph Lauren.  The rationale is that sophisticated purchasers exercise more care when purchasing expensive items.

6. The similarity of means and methods of advertising and promoting the goods or services at issue.  Essentially, do both companies promote the trademarks through the same channels, i.e, both advertise on television, the web, or print campaigns.

7. Was the potentially infringing trademark adopted with good faith or with intent to imitate the established trademark? Per my Victoria's Secret example, clearly Vickey's Secret was adopted with the intent to imitate the established trademark Victoria's Secret.

8. Whether there is evidence of actual confusion of consumers or other relevant groups.  Actual evidence of confusion can be established by customer surveys; diverted internet traffic; and lost sales.

Alliance Metals, Inc. v. Hinley Indust. Inc.

It is important to note that if you discover that another trademark is infringing on your priority trademark right, it is in your best interest to action.  If you do not take action, you can suffer dilution of your brand, lost profits, and lose your trademark rights.  Yes you can lose your trademarks rights.  

In my next post, I will discuss how one loses their trademark rights.  I hope this information was helpful.  If you have any further questions, please leave a comment or contact me via email.