What do you do when a bigger company starts using your trademark? JAYMO’S v. WENDY’S

A trademark is a something which signals to consumers the identity of the producer of a product. Traditionally a trademark is a word phrase or symbol a company uses to brand its products. United States trademark law grants the first user of a trademark, often called the senior user, the exclusive right to brand goods with a trademark. If second company starts using a similar trademark to brand goods, the second company would be considered the junior user. If the junior users brands goods in a way that leads to consumer confusion about the identity of the company that produced a product that can be considered trademark infringement. The senior user can address trademark infringement by filing a lawsuit to stop infringement with an injunction and to get monetary damages for trademark infringement which has occurred.

Trademark law in the United States is complicated because it is governed by federal statutes, state statutes and common law principals. In the United States a trademark can be registered to strengthen the rights associated with a trademark, but registration is not necessary to begin using the trademark to brand products. It is possible to register a trademark at both the states level and federal level. Most states have a method of trademark registration which varies from states to state. Many trademark owners forgo state registration and register their trademark with the United States Patent and Trademark Office.

When a trademark is registered by a junior user, a senior user of a trademark may still have superior rights. Because United States trademark law is based on common law, trademark rights within a certain territory are based on priority of use of a mark within that territory. In that case it is possible for senior user to exclude a junior user from a territory, even when the junior user registers the trademark with the United States Patent and Trademark Office.

A case which illustrates how complicated trademark law can get is JAYMO’S SAUCES, LLC, v. THE WENDY’S COMPANY, 19-cv-01026 (C.D.IL 2019). The plaintiff in this case is Jaymo’s Sauces owned by Jamison Shefts. The plaintiff is a home chef that started his own business selling bottled sauces to supermarkets in the Illinois area. In September of 2015 the plaintiff started branding its sauces with the “S’Awesome” trademark. By using the “S’Awesome” mark for the commercial sale of its sauces, Jaymo’s acquired the trademark rights to the “S’Awesome” trademark under Illinois state statues. The plaintiff did not register the trademark with the United States Patent and Trademark Office.

The defendant in this case is The Wendy’s Company which operates several thousand fast food restaurants. It is the third largest fast food restaurant company in the hamburger sandwich segment of the restaurant industry. In October of 2017, Wendy’s began advertising and selling a line of chicken tenders with a sauce that it called “S’Awesome” sauce. July 11, 2017 Wendy’s filed a trademark application for the phrase “Side of S’Awesome”. January 3, 2018, Wendy’s initiated a purchase of the federally registered trademark “it’s Saucesome!”, which was originally registered with the United States Patent and Trademark Office in July of 2011.

Since Wendy’s starting using the phrase “S’Awesome” in advertising several customers of the plaintiff inquired if the plaintiff had sold the brand to Wendy’s. The plaintiff sent Wendy’s several cease and desist letters expressing the plaintiffs interest in the “S’Awesome” trademark and finally filed a lawsuit for trademark infringement.

The outcome of this case is not clear. It is unlikely that the plaintiff will be able to completely stop the defendant from using the trademark, but it is possible that the defendant will be stopped from using the trademark in Illinois. We will have to wait for Wendy’s answer to see their response.

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