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An Update from Mars: “CocoVaa” Dispute Resolved

Posted in Agreements, Infringement, Law Suits, Mixed Bag of Nuts, Trademark Bullying, Trademarks

Earlier this year, I posted about a dispute between candy company Mars Inc. and a small business based in Wisconsin, selling handmade fine chocolates under the mark CocoVaa.

In March, Mars Inc. filed a federal trademark infringement complaint in the Eastern District of Virginia, asserting that its registered CocoaVia® mark (Reg. No. 4179465), for a dietary supplement powder, was being infringed by the use of the mark CocoVaa for handmade fine chocolates. Mars Inc. sued both the company CocoVaa LCC, based in Madison, Wisconsin, as well as the company’s owner, Syovata Edari.

According to Mars Inc.’s website, the CocoaVia® supplement has naturally occurring “cocoa flavanols” that promote “healthy blood flow from head to toe,” which is important for  “cardiovascular health.” The supplement is available in either capsule form, or in flavored powdered stick packs that can be mixed into drinks, such as milk or smoothies.

Ms. Edari launched a strong public stand against Mars Inc., calling this a case of “trademark bullying” in interviews in local and national media outlets. Ms. Edari noted that her fine chocolates are “distinctly different” than Mars Inc.’s dietary supplement powders, that they have different packaging, and that they appear in “different consumer spheres,” such that consumers would be unlikely to think there’s a connection between the two brands.

In June, Ms. Edari received some good news when Mars Inc.’s complaint was dismissed for lack of personal jurisdiction,  because Ms. Edari and her company do not sell any products in Virginia (where the lawsuit was filed), nor do they have sufficient contacts there related to this dispute.

However, Ms. Edari wasn’t done with this battle just yet.  She anticipated that Mars Inc. may file another trademark infringement complaint in Wisconsin, where her business, CocoVaa LLC, is based.  Therefore, Ms. Edari made a preemptive strike, by filing her own complaint in federal court in Wisconsin, and seeking a declaratory judgment of non-infringement. Just a couple weeks ago, the parties reached a settlement and filed a one-sentence stipulation for dismissal, without any information as to the terms of settlement. However, Ms. Edari stated in a recent interview that her business will continue to operate under the “CocoVaa” name, which is a big win.

Notably, in recent media coverage, both parties refused to comment about details of the settlement, which suggests a confidentiality clause. Just guessing, but based on Ms. Edari’s previous outspoken media campaign and interviews about the dispute, as discussed in my previous post, perhaps the confidentiality clause was required by Mars, Inc., which is more common when settlement terms are favorable to the opposing party.

Thus it appears that Ms. Edari’s declaratory judgment action had a successful outcome, and that this was a favorable settlement for Ms. Edari and her business. As they say, sometimes the best defense is a good offense. What do you think?