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Wawa Not Gaga Over Dawa?

Posted in Almost Advice, Branding, Contracts, Dilution, Fair Use, Famous Marks, Food, Genericide, Idea Protection, Infringement, Law Suits, Look-For Ads, Marketing, Technology, Television, Trademark Bullying, Trademarks

Wawa-logo

Earlier this month, Wawa, an East Coast convenience store chain, demonstrated it is not gaga over a single location food mart (copy of complaint linked here), called Dawa:

DawaFoodMart

As Dawa has vowed to defend its name, will this case come down to a battle over the meanings of the marks? Do consumers really know and understand the intended meanings?

It’s interesting to see how Wawa positions the meaning of its mark with the flying goose over the first “a” in Wawa, saying this on it’s website:

“Wawa” is a Native American word for the Canada Goose that was found in the Delaware Valley over 100 years ago. Our original Dairy farm was built on land located in a rural section of Pennsylvania called Wawa. That’s why we use the goose on Wawa’s corporate logo.

It’s not a bad idea for Wawa to emphasize the Native American meaning for a Canada Goose when its headquarters are located in Wawa, Pennsylvania. Can you say, geographically descriptive?

Dawa counters with an explanation of its very different meaning in the owner’s native Korean language: Welcome. But, the green leaf above the first “a” in Dawa doesn’t seem to reinforce that particular “welcome” message.

In any event, it’s probably fair to say that Dawa hasn’t welcomed Wawa’s lawsuit with open arms, and unsurprisingly it does appear to have Techdirt on its side, but this time, without the specific label and overreaching charge of trademark bullying.

As a trademark type, what I’m most interested in is not the likelihood of confusion question, but rather Wawa’s claim of fame to support its federal dilution violation, which would require no showing of likely confusion.

In support of its federal dilution claim, Wawa points to a 1997 federal trademark dilution decision (Wawa v. Haaf), in which HaHa was found to dilute the distinctiveness of the Wawa mark, and that’s no joke.

It will be interesting to see whether Wawa presses that federal dilution claim because much has happened in federal trademark law since the 1995 federal dilution statute was enacted and the 1997 Wawa/Haha decision.

For example, a number of the early successful fame findings and dilution awards in the mid to late 90s were made in the context of what would now be considered a cybersquatting claim, not a bona fide dilution claim, but the federal anticybersquatting law didn’t exist yet (that came in 1999), so those in the know appreciate that dilution may have been stretched by the courts during that time frame to fill a needed gap — as a result, there are more than a few surprising fame findings in the 1995-1999 time frame that might be suspect and of questionable precedent.

Perhaps even more importantly though, the Wawa/Haha dilution case is one of the justifications for modifying the federal dilution statute in 2006 to eliminate brands only having regional and/or niche fame from such protection, since Wawa was present in only six states at the time of the injunction in 1997.

Here’s a question, do you think the Wawa brand satisfies the now decade old requirement in the federal dilution law that Wawa is “widely recognized by the general consuming public of the United States“?

Here’s another, WWWWD (What Would Wawa Do) if Gaga suddenly decided to get into the convenience store business?

UPDATE: See the Shanice Harris article at PennRecord, here.