It’s not too often that we see a trademark dispute that affects the marketing and advertising community directly (rather than just their clients), but the facts on this one read like answers to the Five W’s:
What? A trademark infringement suit, covered nicely by Jonathan Mahler in the New York Times.
When? Filed in June.
Where? New York (particularly S.D.N.Y.), and also in the TTAB
Why? Because Mr. Seidman owns registrations for HOW and Chobani uses the tagline HOW MATTERS, which they are trying to register.
- Publications, namely, hand-outs in the fields of law, ethics, business regulatory compliance, legal compliance, business conduct and governance;
- Printed correspondence course materials in the field of law, ethics, business regulatory compliance, legal compliance, business conduct and governance;
- Course materials in the fields of law, ethics, business regulatory compliance, legal compliance, business conduct and governance.
- Educational services, namely, conducting classes, seminars, conferences and workshops in the fields of law, ethics, business regulatory compliance, legal compliance, business conduct and governance and distribution of course material in connection therewith;
- Providing on-line training courses, seminars, workshops in the fields of law, ethics, business regulatory compliance, legal compliance, business conduct and governance
- Communications, business and professional conduct by businesses, institutions, and government agencies, governance and leadership, corporate and social values, institutional behavior and culture, corporate governance, values-driven business and values-based business leadership, inspirational leadership, ethical leadership, organizational development, corporate culture, business cultural and social responsibility, and the management and operation of business in an environmentally responsible and environmentally sustainable manner
He also has allowed applications for HOW for board games, card games and software related to corporate culture. He also has applications for HOW METRICS, THE HOW REPORT, and HOW IS THE ANSWER. Nothing here looks like yogurt.
Chobani prides itself on being an ethically sourced, culturally responsible brand. On its “Beliefs” page of its website, it states “We believe every food maker has a responsibility to provide people with better options, which is why we’re so proud of the way our food is made.”
As the New York Times piece rightly points out, there’s a little irony here. “One company is accusing another of stealing its platform for ethical behavior.”
On the “bad facts” for Chobani here, there’s clear knowledge of Dov Seidman’s use of HOW, as the ad agency handling the Chobani Twitter account allegedly tweeted:
@DovSeidman: Thanks for inspiring the world to care about ‘how.’ Can you help inspire the food industry, too?”
The standard for infringement of course is a likelihood of consumer confusion, involving an analysis of a number of factors including similarity of the marks, similarity of the goods and services, and similarity of the channels of trade. Aside from the tweet and Chobani’s corporate values, I don’t think a court (or the TTAB) would find that a consumer would be confused as to source or sponsorship of the yogurt. Survey evidence would likely show that consumers were not aware of Mr. Seidman’s mark, and even if they were, that they didn’t make the connection with the Chobani product. If, however, Mr. Seidman had a certification mark related to ethical responsibility, that might create a stronger argument that there’s a likelihood of confusion that Chobani has been stamped for corporate culture responsibility.
But how strong could HOW be? 1237 active trademarks incorporate the term HOW, and thousands of business, corporate leadership, and management books that use HOW. And what about the HOW Design Conference and the HOW Leadership Conference? Even the title of this blog? And how else can you reference the importance of corporate responsibility in their actions and processes than telling people ‘how’?
I don’t think that Mr. Seidman will win this one, but the most troubling thing here from my perspective is that this is the first time I have seen a tweet form the basis for a trademark infringement lawsuit. The lesson here really is that just 140 characters can come back to bite. If it weren’t for that tweet, there may be no support for the suit to be filed in the first place.
To be clear, I’m absolutely not suggesting that tweets should be cleared through legal – they shouldn’t. But there should be a social media awareness that there’s a potential for creating an unintentional link to sponsorship of another’s brand, just like in a print ad. You wouldn’t want Adidas to tweet something like “Buy these. JUST DO IT.” with a picture of their latest kicks.
More generally speaking, creative agencies should consider pairing up with good legal counsel to review taglines and potential pitfalls before they even get presented to the client. I wouldn’t suggest replacing HOW MATTERS with THE BIG MOO.