They say that the best defense is a good offense. It appears that General Mills has adopted this strategy in a recent trademark dispute over the term LOADED in connection with instant potatoes.
Just yesterday, the Minneapolis St. Paul Business Journal reported the filing of a federal district court lawsuit by General Mills against Idahoan Foods, in which it apparently requests cancellation of Idahoan Foods’ federal trademark registration for LOADED BAKED, and further requests that General Mills be able to continue using the term LOADED in connection with instant potato products, including Betty Crocker’s Loaded Mashed:
Apparently Idahoan Foods sent to General Mills a June 25, 2010 cease and desist letter, asserting infringement of its federally registered trademark LOADED BAKED for "dehydrated potatoes and mashed potato mix."
Trademark types will appreciate that since the LOADED BAKED trademark registration issued on July 19, 2005, it is quite curious that Idahoan Foods didn’t wait a few more weeks to play hot potato with or otherwise attempt mashing General Mills, i.e., until the fifth anniversary of its federal registration, when it promptly could have and should have submitted its combined Section 8 & 15 Declaration, in order to not only maintain, but achieve incontestable status for the LOADED BAKED trademark registration.
Timing can be everything in trademark litigation, and while I should reserve final judgment until obtaining, reviewing, and sharing with you a copy of the federal district court complaint, it appears to me — at least from U.S. Trademark Office records — that General Mills acted so promptly, in part, to prevent the LOADED BAKED trademark registration from becoming incontestable. Having done so, now General Mills is free to challenge the trademark on far easier descriptiveness grounds.
In other words, had Idahoan Foods filed the necessary papers to obtain incontestable status for the LOADED BAKED registration before complaining to General Mills, and before General Mills formally challenged the validity of the federal trademark registration, there would have been no ability by General Mills to invalidate it on descriptiveness grounds, a much easier challenge than proving genericness.
Now that the federal district court lawsuit has been filed, and now that General Mills also has filed a Petition to Cancel the LOADED BAKED trademark registration, with the U.S. Trademark Office, Idahoan Foods is precluded from making the necessary Section 15 Declaration filing that would have rendered the registration incontestable and left General Mills with the more difficult task of proving LOADED BAKED generic for "dehydrated potatoes and mashed potato mix."
So, stay tuned for more developments and additional thoughts after I’m able to obtain and share with you a copy of the complaint.
Hat tip to Barry Johnson for knowing I’d be interested in writing about this one.