the crossroads between food and IP
On February 13, 2020, the U.S. District Court enjoined Sulaiman Waleed Rodriguez from using TAPATIO’s marks in selling its THC laced sauces.
The dispute began nearly a year ago on March 11, 2019, when Tapatio Foods sued for trademark infringement, unfair competition, and dilution arising from defendants sales of hot sauce laced with THC.
After the filing an Amended Complaint in April 2019, the defendants defaulted, resulting in the Court entering judgment last week.
The owners of the Salitre Meson Costero restaurant in Arecibo, Puerto Rico, have sued Hilton International of Puerto Rico Inc., in the U.S. District Court for Puerto Rico [3:19-cv-02165] for trademark infringement and unfair competition by using the name Salitre and then Salitre de Caribe for a restaurant in its Caribe Hilton hotel. Plaintiffs are seeking an injunction, $4 million in damages, and $650,000 for corrective advertising.
Hilton used the name briefly in 2019, but promptly changed the name to Nectar de Caribe after plaintiffs initially complained, a move that plaintiff’s claim “proves that the Defendants have recognized the willful confusion they caused.” Plaintiff’s further complain that Defendants keep using the menus intended to evoke the views, feelings, environment and characteristics that “Salitre Meson Costero” evokes, including “the view, the palm trees and the whole tropical sea motif.”
The name of this blog, Sinceslicedbread is an homage to the idiom “the greatest thing since sliced bread,” which refers to a particularly significant innovation. It is believed that phrase evolved from the a July 6, 1928, advertisement by the Chillicothe Baking Company of Chillicothe, Missouri, touting their new sliced bread as the “greatest forward step in the baking industry since bread was wrapped.”
By 1930, Wonderbread was selling sliced bread with a similar slogan, and the fanfare for sliced bread eventually resulted in the idiom “the greatest thing since sliced bread.”
Sliced bread itself owes its origin to Otto Frederick Rohwedder of Davenport, Iowa, who worked for many year to invent an automated bread slicer. Otto struggled to sell his invention until he solved the problem of the sliced bread quickly becoming stale, by wrapping the thinly sliced loaves in wax paper immediately after slicing. Chillicothe Baking Company was his first customer, and that machine is now in the Smithsonian.
Otto then applied for a patent and in 1932 received U.S. Patent No. 1,867,377.
Commedian Red Skelton is usually credited with the first published use of the phrase, telling a Maryland newspaper in 1952 that “television is the greatest thing since sliced bread.”
Design patents protect the appearance of products, which can include food products. US Class D1 is the class for design patents, populated with designs for confections, snack food, and pet treats.
If consumers would care what your food product looks like, design patent is a relatively inexpensive way to protect the appearance for fifteen years, until the appearance becomes distinctive enough to qualifies for trademark protection.
In May 2018, the owner of the trademark Derby-Pie sued the Louisville Courier Journal for misusing the Derby-Pie trademark in several articles that appeared in the paper. See, 3:18-CV-277-RGJ. Just last week the district court dismissed plaintiff’s trademark infringement, trademark dilution (because plaintiff withdrew it), and fraud claims.
One article was describing a Derby pie recipe containing bourbon.
The second article was about a Derby pie flavored macarons:
The court rejected the Courier -Journal’s argument that
the First Amendment provides complete immunity from Lanham Act claims. The district court noted that only one district court had extended Rogers v. Grimaldi from
“artistic works” to “newsgathering activities.”
However the district court was more receptive to defendants argument that it had not used Derby pie in a trademark way. The district court said that whether the defendant was using the trademark in a trademark way was a preliminary question to the likelihood of confusion analysis., because if the mark is being used in a non-trademark way, trademark infringement laws, along with the eight-factor analysis, do not even apply.
The district court found that the Complaint fails to plausibly establish that the Courier Journal used Plaintiff’s Mark in any
other way than a non-trademark one. The district court also found that the Complaint had not plausibly established that there is a risk of consumer confusion because both Articles explicitly and repeatedly identify the source of the product as being other than DERBY-PIE®.
As to the first use, the Court noted that “Chocolate-walnut bourbon pie from Captain’s Quarters” identifies the source
of the recipe as Captain’s Quarters, not DERBY-PIE®. Moreover, the headline, “Bourbon makes this Derby pie a state original,” uses “Derby” to modify “pie,” not to identify the source of the product as DERBY-PIE®. This is analogous to using “Derby” to modify “horse,” “hat,” or “party” and does not constitute an impermissible use of the Mark. The Court further noted that because bourbon is not an ingredient in DERBY-PIE®, Defendant’s use of the word “Bourbon” in the headline also indicates that this is not a recipe for DERBY-PIE®.
A reader of Article 1 would not think that Defendant, a newspaper, produced DERBY-PIE®.
Article 2 likewise uses “Derby Pie” in a non-trademark way. Next to a photograph of macarons, Defendant identifies three flavors sold by Derby City Macarons: “Derby Pie, Mint Julep and Peach Tea.” A DERBY-PIE® is a pie; a Derby Pie macaron is a “French almond flour pastry.” Thus, because the Defendant visually and textually links “Derby Pie” to a flavor of macaron sold by Derby City Macarons, a reader would not think that Defendant produced DERBY-PIE®.
The court concluded that because defendant used the mark in a non-trademark way, trademark infringement laws do not apply, plaintiff’s infringement count should be dismissed.
The originator of a product often has difficulty holding on to the trademark, because the brand that the originator bestows on the product, often becomes the name of the product, and thus unprotectable. Mr. Rupp continues to fight the good fight, apparently, but in this case, since the Courier-Journal was not advertising or selling pies, he might have stuck with his dilution claim (unless he was worried that he could muster sufficient proof of Derby-Pie’s fame.
International Class 30 is a broad class, that includes many types of food, drinks, and cooking ingredients, such as coffee, tea, cocoa, rice, flour, bread, pastries, sugar, honey, yeast, baking-powder, salt, mustard, vinegar, sauces, condiments, and spices.
New trademark filings in Class 30 have shown a steady increase over the past decade, as illustrated by this chart:
Mustard Girl, a gourmet mustard company founded by Jennifer Conner, sued its co-packer Olds Products Co. of Illinois (in Cook County Circuit Court, No. 2020L002316) for (1) trade secret misappropriation; (2) breach of contract; (3) tortious interference with prospective; business expectancy; (4) promissory estoppel; and (5) unjust enrichment.
According to the Complaint, Olds used Mustard Girl’s formula to create private label brands for two of Mustard Girls’s largest customers. Olds also caused Mustard Girl to miss winning a gold medal from the National Mustard Museum and losing a major national account by filling Mustard Girl’s bottles from the dregs left over after filling bottles for Olds products first. Finally Olds abruptly terminated its relationship with Mustard Girl at the cusp of its busy season, allegedly telling Mustard Girl “This is how we put people out of business!”
All of this came to light because Mustard Girl was contacted by a sympathetic employee of Olds who had been apologetic about the way Olds
had treated Mustard Girl.
Small food companies like Mustard Girl depend upon co-packers to make and help distribute their products. Mustard Girl appeared to handle the relationship appropriately, entering into a confidentiality agreement with Olds. Although Mustard Girl should have put the agreement in a sage place, because she apparently lost it. Hopefully this lapse will not damage Mustard Girl’s claim. In retrospect, Mustard Girl probably could have negotiated a longer notice period, and probably should have been more in touch with its customers, and been more on top of sales volumes so that it could discover its co-packer’s misdeeds sooner,
If Olds behaved as it is alleged to have behave, one would hope that the law will provide a remedy to Mustard Girl. In the meantime Mustard Girl’s plight is a warning to small food companies to actively manage their relationships with co-packers.