Diluting the spice of a trademark. McCormick v. Primal Palate

Diluting the spice of a trademark. McCormick v. Primal Palate

A trademark is a word phrase or symbol that a company uses to distinguish its products from similar products in the marketplace. Trademark law is a consumer protection law intended to prevent consumers from being tricked into purchasing inferior quality products.  To prevent consumer confusion, trademark law grants the owner of a trademark the exclusive right to brand goods with a trademark.  If someone other than the trademark owner brands goods in a way that causes consumer confusion, that can be trademark infringement. A trademark owner can sue to stop trademark infringement with an injunction as well as to recover monetary damages for trademark infringement which has occurred.

The strength of a trademark is measured by how strongly consumers associate a trademark with the products of the company that owns a trademark.  Trademarks that have extremely strong consumer associations are frequently mimicked.  The people who mimic other trademarks hope that the positive consumer goodwill associated with the original trademark will transfer to the mimic.  The mimic trademark is not similar enough that consumers are tricked into thinking that the mimic is the original, so there is no trademark infringement, but the mimic is free riding on the original trademark’s goodwill.

Mimicking another company’s trademark in an attempt to capitalize on consumer goodwill can be considered trademark dilution.  The Federal Trademark Dilution Act of 1995 expanded the scope of rights granted to famous and distinctive trademarks under the Lanham Act. Dilution differs from normal trademark infringement in that there is no need to prove a likelihood of confusion to protect a trademark.  To prove a claim for trademark dilution all that is required is that use of a trademark by a third party causes the dilution of the distinctive quality of the famous trademark.

Trademark dilution can be difficult to prove because not every trademark qualifies for protection.  Only famous trademarks are protected from dilution and a trademark owner must demonstrate to a court that the trademark qualifies as famous.  If a trademark is determined to be famous then the trademark owner needs to demonstrate dilution by Blurring, which means the connection in consumers’ minds between the trademark and the trademark owner’s products is weakened; or Tarnishment, which means that the defendant is damaging the reputation of the trademark.

MCCORMICK & COMPANY v. PRIMAL PALATE, LLC,  1:18-cv-03799 (D. Md. 2018) involves a company with a famous trademark that feels a competitor is diluting the trademark.  McCormick produces and sells food-related products, including food seasonings, spice blends, marinades and sauces.  It has a trademarked product, OLD BAY, which has been sold since 1939.  Old Bay is a traditional american style seasoning for crabs, and has been developed into recipes for a number of other types of foods.

The defendant is a relatively new company that focuses on consumers that are interested in the paleo diet lifestyle.  Paleo diet people restrict the food they eat to what people in the paleolithic era could have eaten. In October 2017 the defendant launched a new seasoning blend branded NEW BAE.  In its advertising the defendant frequently made puns which alluded to McCormick’s product.

McCormick sued for Federal Trademark Dilution under 15 U.S. § 1125(c), Federal Trademark Infringement under 15 U.S.C. § 1114 and False Designation of Origin under 15 U.S.C. § 1125(a).  To demonstrate that the OLD BAY trademark is famous, McCormick submitted several articles published in prior decades which praised the product and called OLD BAY iconic.  To demonstrate that there was dilution of the OLD BAY trademark McCormick submitted evidence of consumer comments from social media which shows that consumers think there is some relationship between the two products.

The defendants will have an opportunity to respond to the complaint, but it will be an uphill battle for them.

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