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.

When Choosing a Business Name Also Perform a Trademark Search!

Hello!

When choosing to go into business, there are several imperative tasks you must accomplish to ensure you are legally compliant. They are:

1. legally organize your business with the Secretary of State's Office;
2. obtain a valid business license;
3. obtain a federal employee identification number and if needed a sales tax number;
4. claim and obtain a trade name (if needed);
5. claim and apply for a trademark

However, most new business owners never consider claiming and applying for a trademark until it becomes a necessity or someone else asserts claim to their trademark. For this very reason, I advise my client to:

1. do a preliminary search to ensure that a trademark right has not been claimed in the company's business name;
2. after a trademark search has been completed, and the business name appears free from trademark claims, immediately apply for state and federal trademarks.

In my legal opinion, it is imperative to perform a trademark search as soon as you choose a company name. Why? If you choose a name that already has priority trademark rights, and you have spent considerable funds establishing and growing the business, you may have to change your name. Ouch! In addition, if no trademark rights have been asserted in your company name, you would want to claim ownership of the trademark. Very often people tend to infringe on company and or trademark names if they see the potential in its success! Remember, the first to use the name in commerce is the priority trademark owner!

A preliminary search on Google will cost you $0. However, to ensure you are not infringing another trademark owner's rights, a more comprehensive search can be done for $550. In my opinion, $550 is a small price to pay for a piece of mind.

I welcome your thoughts!

Using Third Party Trademarks as Meta-Tags on Blogs

Hello!

I hope all is well! Like most bloggers, I use meta-tags based on the subject of my blog or posts, to make it easier for search engines to find my blog when an internet users enters the search term. However, what happens when you use a trademark as a search term.  Is it trademark infringement or a search engine linking function?  This issue was discussed at PLI's Intellectual Property Law Institute.  There are two critical cases that have recently addressed this issue. However, each ruling is different.  Here is a brief synopsis of the law as it stands today:

1. The use of trademarks in meta-tags is "use in commerce" and therefore trademark infringement. The 11th Circuit came to this inclusion this year in North American Medical Corp. v. Axiom. The court stated that the use of a trademark as a meta-tag was use in commerce. Essentially, the court concluded that the use of the meta-tag, which resulted in the trademark in question being displayed on the search engine, was an advertisement for the sale of goods. Thus it was used in commerce.

2. However, the 2nd circuit decided in 1-800 Contacts, Inc. v. WhenU.Com, Inc. that use of trademarks in meta-tags was not a "use in commerce" because the search engine merely provided the link to the trademark.  The court emphasized that linking a trademark through a search engine was not a use in commerce because the trademark in question was being displayed by a machine and the defendant was not causing the trademark to be physically placed on goods or services, or was physically causing the trademark to be displayed or reproduced.  

What does all of this mean for those of us who use meta-tags? Although the 2nd Circuit and 11th Circuit give different opinions on whether the use of trademarks in meta-tags is trademark infringement, it is better to be safe than sorry.  When using meta-tags be wary of using trademarks.  Make sure that when you purchase key words meta-tags that there are not any trademark in the list.  The last thing you want is to be sued by a huge corporate giant for trademark infringement.

Trademark Infringement: Priority of Use and Likliehood of Confusion

Hello!

Today I am going to explain the requirements to prove trademark infringement.  Believe it or not, there are tons of trademarks that infringe on another trademark's rights whether intentionally or unintentionally.  As I have discussed previously, it is important to protect your trademark to avoid dilution of your brand and to protect licensing rights and royalty income.  

In order to prevail on a trademark infringement action, an individual or company must show (1) priority of its trademarks use in commerce and (2) the use of similiar trademarks in commerce is likely to cause confusion among the relevant consuming public. Cumulus Media Inc. vs. Clear Channel Communications.

In this post, I will explain what the law means when it states a mark must have "priority of use in commerce."  In my next post, I will explain the concept of "likliehood of confusion."

Priority of Use in Commerce

A trademark will have priority rights over another similar trademark if the trademark was used first in commerce.  The definition of use in commerce is the bona fide (actual) use of the trademark in the ordinary course of trade, and not made merely to reserve a right in the trademark. The Lanham Act sec. 45.  More specifically, it comprises the trading of something of economic value such as goods, services, information or money between two or more entities. 

A few examples of Use in Commerce are: 

1. selling a product or service online.

2. publishing (print and online)

3. distribution of products

Use of Commerce is not:

1. Using a trademark as a key word to trigger the display of sponsored links online is not use of the mark in a trademark sense.  (Merck vs. Mediplan)

2. Simply registering a domain name. (Brookfield Communications Inc. vs. West Coast Ent.)

3. Simply incorporating a business without customers.

Priority of Use in Commerce can be established by:

1. The trademark owner was first to use the trademark in its region.

2. The trademark owner was first to file an application with the USPTO based on use in commerce.

3. The trademark owner was the first to file an application with the USPTO based on intent to use, however, the trademark owner MUST show actual use within 6 months of an intent to file.

I hope this information was helpful.  Please leave a comment or contact me via email if you have any further questions.