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Is Dr. Pepper Pulling (Hawaiian) Punches in Enforcement Efforts?

By Tim Sitzmann on July 11, 2018
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On a recent shopping trip, I couldn’t help but notice some interesting brand extensions inside and outside the stores.

My encounter inside involved Burt’s Bees . The brand encompasses a wide variety of lip balms, lotions, cosmetics, and personal body care items. (pets, too). Yet I discovered a new addition to the lineup: Burt’s Bees protein shake powder.

While most cosmetics and lip balm companies don’t make a jump into the nutrition field (a ChapStick shake just doesn’t sound appetizing), Burt’s Bees’ extension seems to make sense. In my mind, I’ve always associated it with an image of healthy, natural products, and nutrition products seem to fit that image.

Outside, I ran into a similar situation in the lawn and garden center: a blast from childhood past:

This seemed a bit further afield than Burt’s Bees. Had my childhood sugary “fruit” drink really expanded into live flowers? After all, the company does sell Hawaiian Punch lip balm.

However, the answer seems to be no. The flowers are a sold by Canadian company Fernlea Flowers. The company has even registered the mark with the U.S. Patent and Trademark Office, without an opposition from Dr. Pepper/Seven Up (the owner of rights in the HAWAIIAN PUNCH mark).

Are flowers sufficiently related to fruit juice and lip balm such that Dr. Pepper should have objected to the use of HAWAIIAN PUNCH for flowers? Generally speaking, I’d say the goods are highly unrelated. Yet the marks are identical, the HAWAIIAN PUNCH mark has been licensed for other non-food goods, and the HAWAIIAN PUNCH mark is arguably famous. Plus, the mark could have been licensed because the flowers are the colors of various flavors of Hawaiian Punch drinks. Are these factors enough to create a likelihood of confusion?

If there isn’t a likelihood of confusion, is there a claim for dilution? This seems more plausible, but would extending protection of HAWAIIAN PUNCH to live plants in this instance effectively give the owner a right in gross to the phrase HAWAIIAN PUNCH? Is that okay for marks that can establish that they are famous? What do you think, was this an enforcement punch worth pulling?

Tim Sitzmann

View my professional biography

I have always considered myself to be a creative person. Full disclosure: I’m not claiming that I’ve created anything good, merely that I have created things that exist. Over the years I have made skateboarding movies, played bass and…

View my professional biography

I have always considered myself to be a creative person. Full disclosure: I’m not claiming that I’ve created anything good, merely that I have created things that exist. Over the years I have made skateboarding movies, played bass and guitar in bands, acted in plays, written and performed sketch comedy, and even acted in an independent (i.e. very low-budget) zombie movie. Unfortunately none of these ever blossomed into a career. I guess it was the classic case of being ahead of your time.

Thankfully these hobbies put me on a path to my current career as an intellectual property attorney. In fact, my first legal venture was obtaining copyrights for my band’s debut (and only) album. I had considered law school as an option but I hadn’t committed by the time I finished my undergraduate studies. To buy time I signed up for a student work visa and moved to London. Thanks to destiny, dumb luck, or both, I found a position in a law firm specializing in trademark law and brand management. It was my first exposure to the practice of law, and I quickly discovered that I had found my future career.

When I’m not in the office, I spend my time playing my guitar, obsessing over baseball (go Twins!), or talking up a band, movie, or television show that has recently impressed me.

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  • Posted in:
    Intellectual Property
  • Blog:
    DuetsBlog
  • Organization:
    Winthrop & Weinstine, P.A.
  • Article: View Original Source

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