Top Three Funny Trademark Oversights

Nadaline Webster,

Thousands if not millions of trademarks are registered round the world every year. It would be beyond miraculous if each year there were not a selection of oversights that in retrospect, are just ridiculously funny. I have collated my top three favourites below. Selecting just three was the real challenge here!

However, before you jump in, I would urge you not to judge these companies too harshly. It’s incredibly easy in this fast-moving world to miss something on an application, leap to action too quickly, rely on misleading appearances or get caught up in defending your loved product without thinking the issues through. It could happen to any of us.

1) The National Pork Board objecting to ‘Canned Unicorn Meat’ description 

I think that no matter how many trademark cases I read or how many disputes I come across, this might remain as my very favourite forever. In 2010, thinkgeek.com dreamed up a fantastic April Fools gag. They created the fictional product of ‘Canned Unicorn Meat’ along with a product page listing it for sale. In the description of the product, the following statement appeared: “Pate is passe. Unicorn - the new white meat.” Lawyers acting for the National Pork Board issued a 12 page cease and desist letter on the basis of their registered mark THE OTHER WHITE MEAT. Only to be somewhat nonplussed to discover that the product doesn’t exist in reality at all. In one sense it is a pity that there wasn’t a hearing on this topic. I would have enjoyed hearing estimates of how the availability of unicorn meat impacted the sales of pork throughout the US.

Key takeaway - it sounds obvious in retrospect but careful research into the existence of a product before taking action could save a lot of blushes in the long run.

2) Subway sending a ‘cease & desist’ letter in respect of rights they didn’t actually have

The word ‘footlong’ has been used to describe 12 inch hotdogs and sandwiches for quite some time. In the case of the Coney Island Drive Inn, they have been using the word for over 40 years to describe their hotdogs. So you can imagine their surprise to receive a cease and desist letter from Subway. The letter was quickly recanted with a later statement making it clear that there is no issue with other businesses using the word for hotdogs. Although one might have to consider whether the word ‘footlong’ could reasonably at this point be considered generic for foodstuffs that are literally, a foot long?

Key takeaway - again this is a research issue. Careful checking of the use of suspected infringing mark would have been of great assistance here.

3) Häagen-Dazs laying claim to other (actual) Swedish words being used for ice cream

Despite the popularity of Häagen-Dazs ice cream and the marketing that comes with it, Häagen-Dazs is not actually a Swedish name. Nor is the company. Haagen-Daaz came up with a Swedish sounding name and invested heavily (and effectively!) in a Swedish-themed marketing package. Frusen Gladje was an ice cream also manufactured for the American market and Haagen-Daaz’s objections included the similarity in marketing techniques although the names and trade dress of both products were vastly dissimilar in almost every aspect. Ultimately the court held that what Haagen-Daaz were actually objecting to was the marketing concept employed by Frusen Gladje and not any likelihood of similarity between the brands or packaging themselves. The claim was not upheld because trademark protection does not extend to protecting the underlying marketing concepts of any brand.

Key takeaway - Understanding the scope of protection that applies to your brands can help avoid bringing actions that are destined to fail.

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