This blog post was written by Abe Cohn and Originally Appeared on Entrepreneurial Chef Magazine
Setting the Stage: Your Food Startup is a Success!
After five long years, your food startup has done everything your doubters arrogantly predicted it wouldn’t do. It is now a multi-million dollar success story and over 10,000 stores throughout the United States sell your trademarked product, Volcano Bites, a fruit snack containing 100% real orange and pineapple juice with no artificial additives. While you were initially hesitant to file your trademark for Volcano Bites in the United States Patent and Trademark Office (USPTO), you are now thrilled to have made the investment. Indeed, several large and very famous food companies are courting you with proposals to purchase your company name and because you’ve registered the name in the USPTO, you now have a proprietary right to its exclusive use (in conjunction with food items) throughout the entire United States!
It’s Time to Celebrate!
To celebrate the inclusion of your product in the 10,000th store, you decide to head over to Walmart, which, has just stocked the very front shelf of the snack food section with your product and purchase a box of Volcano Bites. As you make your way up the aisle, you notice with great surprise and bewilderment a product called “Volcano Squares”. Upon closer examination, it appears that Volcano Squares also markets itself as a healthy fruit snack that is made from only natural juices and ingredients. Even more shockingly, Volcano Squares has decided to use the same color scheme of orange, blue, and yellow on its packaging materials! It’s true that the shades of these colors might be slightly different than your pastel color scheme but nevertheless, the box certainly bears a remarkable resemblance to your Volcano Bites packaging. Naturally, you’re worried that a customer might come into the store with the intention of buying your now-famous Volcano Bites and mistakenly end up purchasing Volcano Squares. What if anything can be done about this?
Trademarks Represent Something – Good or Bad
As a brief recap, a trademark, on the most fundamental level, is a source identifier. When a consumer sees a name/logo/slogan on a product, the consumer automatically makes certain value assumptions about the quality of the good based on the reputation of the manufacturing company, as represented by the trademark.
Not convinced? Consider for the moment the internal experience of a 70-year-old person at Best Buy who for his very first computer selects an Apple laptop. Though a computer novice, he has seen enough television advertisements with hip, attractive millennials using Apple computers to know that that’s the brand for him. Apple computers just seem cool. This inexperienced purchaser of course isn’t technologically savvy enough to appreciate the technical specifications of his chosen computer when he takes it out of his cart at the checkout line but for him, that doesn’t matter. He purchases a laptop with the Apple symbol on it because of what the symbol represents. This purchasing narrative is what trademark law is all about.
Consumer Confusion is the Devil
Returning to the seemingly nefarious activities of Volcano Squares, the concern that a consumer might mistakenly reward Volcano Squares with an automatic purchase based on the erroneous belief that the product came from Volcano Bites is certainly a legitimate claim warranting legal examination.
Indeed, undergirding all of trademark law is the imperative to ensure that newer-moving companies are not illicitly siphoning off sales from first-acting companies with confusingly similar trademarks. Presently, we are asked to consider whether Volcano Squares is so similar to Volcano Bites as to lead to consumer confusion and cause a buyer to think the fruit snack bearing Volcano Squares is actually a product developed by Volcano Bites.
In order to make this determination, we may rely on the seminal, Polaroid Factor Test. The Polaroid factor test is used by Judges to determine whether or not trademark infringement has occurred and consists of eight separate metrics.
- The strength of the mark.
- The degree of similarity between the two marks.
- The proximity of the products/services.
- The likelihood that the prior owner will bridge the gap.
- Actual confusion.
- The defendant’s good faith in adopting its own mark.
- The quality of the defendant’s product.
- The sophistication of the buyers
If we consider these factors in their totality, the test represents the meta-goal of ensuring a buyer will not experience confusion as to the source of the product bearing the mark. The more similar the prospective mark is to the original, the greater the likelihood of confusion and therefore the greater the chance trademark infringement has occurred. Critically, while each factor is important, they do not all need to satisfied for a judge to find that consumer confusion has taken place.
Without exploring each of these points in too great of detail, it seems like Volcano Bites can make a very good case that Volcano Squares is indeed infringing. The most salient features of the present infringement are the following; Volcano Bites is a “strong” mark as it is entirely unique and distinct to the food category. Volcano Bites and Volcano Squares both share the powerful core word “Volcano.” The products are nearly identical and will likely always be sold in the same food aisle.
Has There Been Trademark Infringement? You Know It When You See It
Supreme Court Justice Potter Stewart famously chose to characterize the standard for designating pornography, as such, with the famous quip, I know it when I see it. The idea here of course is that certain things have no steadfast rules and breakpoints. The purpose of the Polaroid Factor Test is to create cognizable parameters for our intuition; How do you know that Volcano Squares has infringed on Volcano Bites’ trademark? Well, you know it when you see it.
Have a question? We want to know. Contact a Food Lawyer today.