San Diego Trademark Attorney® Blog

July 2011 Archives

Killer-Buzz Trademark Dispute

July 29, 2011,

Bee.jpgSan Diego, CA - On December 20th, Hansen Beverage Company was stung by PBEV, LLC in a federal trademark infringement suit filed in Alabama federal court over use of the Killer-B Nitrous Monster Energy drink line. Stan Pate, owner of PBEV, LLC, quipped "I'm not afraid of a Monster" and that he would fight to protect his Killer-Buzz trademark.

PBEV, an Alabama-based beverage company, uses the combination of 17 amino acids, that it claims can provide the energy and stamina of the Asian Giant Hornet. The ingredients in Hansen's Killer-B drink include bee pollen and honey. A day after the December 20th filing, Hansen filed its own suit in Delaware federal court, asking that the case be thrown out. Hansen claims that there was no infringement and that it has been using the term "buzz" on its packaging since 2002. Hason also points to the use of its trademarked Monster claw-marks on the honey-combed can which it claims lessens any potential for confusion.

Since acquiring the drink line from Vespa Beverages in March 2010, PBEV has realized $1 million in sales of "Killer Buzz". Hansen reportedly has the lion's share with over $1 billion in energy drink sales in 2009.

According to USPTO.gov, the "Killer Buzz" trademark was first used in commerce in early 2005 while "Killer-B" has been in use since July 2009. Just over one year ago, Hansen challenged another small player when it sent a cease and desist letter to Rock Art Brewery asking them to stop using the name "Vermonster". The dispute was settled out of court when Hansen agreed to let the brewer continue using "Vermonster" as long as it only used the trademark for barley wine, and not for energy drinks.

Infringing trademarks ruffling Twitter's feathers?

July 22, 2011,

twitter.jpgSan Diego, CA - Many people have questioned what has seemed to be a relaxed attitude from Twitter in regard to policing its trademarks. Now it appears that the five-year old social networking and blogging service is beefing up protection of its brand. Is this an agressive business tactic or a smart marketing strategy?

According to federal trademark law, a trademark owner must police its trademark by preventing others from using it without permission, or risk losing rights to it. Twitter doesn't seem to be intent on haulting others from simply using the words twitter, tweet, or other variations of the name especially for other trademark classes where confusion is not likely. Twitter is more interested in free licence agreements for use of the words for applications and websites that promise to solely promote Twitter services. Information on guidelines for use of Twitter's trademarks can be found here: http://support.twitter.com/forums/26257/entries/77641.

Twitter's trademark guidelines prohibit applications for trademarks which contain the words "twitter" and "tweet" (or similar variations thereof). With regard to TweetDeck.com which has created a similar looking bird logo, this is arguably in violation of Twitter's trademark guidelines. Other companies such as Postup.com seem to be eager to comply with Twitter policies. Formerly called Tweetup.com, the company changed its name after making the move to promote other social networks.

Thus far, Twitter has done a good job of walking softly while carrying a big stick. We will see if the inevitable ramp up in trademark policing efforts happens with Twitter.

All War for Peace, Love, and Popcorn Trademark

July 15, 2011,

popcorn.jpgSan Diego, CA - Love, Peace, and Popcorn felt anything but peaceful this Christmas. On December 22, 2010, the small, family-owned gourmet popcorn business was slapped with a lawsuit by Illinois-based Popcorn Factory, claiming trademark infringement and cyber-squatting.

Gary Paparell, owner of Love, Peace, and Popcorn insists that he properly registered the trademark after his 19-year old daughter helped him brainstorm the clever name and logo. In his mind, if he properly registered the trademark and was issued a notice of allowance in 2009, then what is the problem?

The opposing Popcorn Factory claims to have been using the Peace, Love, and Popcorn trademark since May 2008, just three months before Paparella filed his application. Because of the close similarity in the names and Popcorn Factory's claim that the similarity would likely cause confusion with popcorn consumers, the 31-year old subsidiary of 1-800-FLOWERS.COM, Inc., is not only demanding that Paparella cease and desist use of the trademark, but also hand over all profits he has made from it. Due to the suspicious timing of the tradmark filings and domain name registrations, Paparella may have some difficulty proving he had no knowledge of The Popcorn Factory's use of the trademark.

Under the Anticybersquatting Consumer Protection Act (ACPA), the mom-and-pop business can be sued for up to $100,000 in damages per domain name. This could be a costly lesson for Mr. Paparella and one that won't bring him peace anytime soon.

Hershey Sues Mars for Broken Trade Dress Promises

July 8, 2011,

candy-easter-cadbury.jpgSan Diego, CA - Hershey Co. recently filed suit in the United States District Court for the Middle District of Pennsylvania in Harrisburg, PA against candy producing rival Mars, Inc. The complaint, filed in late November, accuses Mars, Inc. of trademark infringement, trademark dilution, and unfair competition regarding the packaging of its Dove peanut butter Promises candies. The Hershey Co., located in Hershey Pennsylvania, named after founder Milton S. Hershey, is America's largest producer of chocolate candy products, and is perhaps most famous for the chocolate Hershey bar and Reese's Peanut Butter Cups products. Virginia based Mars, Inc. is the second largest chocolate candy producer whose products include the Dove chocolate products, M&M's, and Snickers. In addition Mars, Inc. is America's largest confectionary company after a recent 23 billion dollar acquisition of Wm. Wrigley Jr. Co., famous for their chewing gum products.

Hershey claims that the packaging for Mars' Dove peanut butter Promises closely mimics the packaging of Reese's Peanut Butter Cups as set out in U.S. Trademark Registration No. 2,256,226. As set out in the registration, the trademark consists of: "an orange-colored background covering the entirety of the packaging for the goods. The orange color is approximately equivalent to pantone 165C. The mark consists of color alone". The orange, brown, and tan Reese's packaging color scheme has been used by Hershey for decades, and Hershey claims that this pattern has acquired secondary meaning, creating an association between these colors and the Reese's product. The lawsuit alleges that Mars, Inc.'s use of similar colors infringes Hershey's trademark for the Reese's product line and will unfairly confuse costumers.

Sears Sued Over Shape-ups' Trademark and Patent

July 1, 2011,

shoes.jpgSan Diego - Last week in a California District Court, Sketchers filed a complaint against mega-retailer Sears, charging it with patent and trademark infringement. The alleged infringement involves Sketcher's Shape-Up product line, which it claims is being copy-catted and sold at Sears and Kmart stores.

The popular athletic toning shoe has been a hot item for Sketchers, the Manhattan Beach, CA manufacturer of lifestyle footwear. Sears and Kmart are selling the shoe under the Paris Blues, Melrose Avenue, and Therashoe brand names. Over the past few years, toning shoes have risen in popularity because of their claim to help the shoe-wearer burn more calories by using a patent technology utilizing thick, curved soles, which supposedly increases muscle activity and tone. Other companies such as Reebok and New Balance have developed their own lines of toning shoes.

Attorneys for Sketchers say that the company spent a considerable amount of money and resources to develop the shoe line, obtaining over 150 trademarks and patents for it. The Sketchers complaint is charging Sears with trade dress infringement, trademark dilution, and unfair competition.

Sketchers is seeking unspecified compensatory and punitive damages.