Monthly Archives: August 2020

Overwhelming Differences Lead to Summary Judgment of No Trade Dress Infringement

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Topps Co. sued Koko’s Confectionery & Novelty for patent infringement and trade dress infringement.

The district court granted summary judgment of non-infringement of the patent, and of non-infringement of the trade dress.

As to the trade dress infringement claim, the district court said no reasonable jury could find that the trade dresses of the Juicy Drop Pop and the Squeezy Squire Pop are confusingly similar because the lack of similarity between the two products is “overwhelming.” The district court noted that (1) in SSP, the nozzle cap and candy handle are adjacent to each other, while the nozzle and the handle in JDP are located on opposite ends, (2) SSP’s nozzle cap has a plastic “geyser” of the liquid candy in the same color as the nozzle cap, whereas JDP lacks an analogous feature and its nozzle and nozzle cap are a different color from that of the rest of the trade dress. (3) SSP’s nozzle cap and handle are far larger and in different shapes from those of JDP. (4) Lastly, SSP’s bottle has an oval-shaped compressible portion with concentric ovals; JDP ‘s compressible bottle has a round compressible portion with a swirl design. The district court said “[t]aking these features into account, the overall impression of the two products are dissimilar.

Goodwill Hunting

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Hot N’ Sweet Concepts, LLC sued Nextbite Brands, LLC, in the Western District of Oklahoma for infringing its MOTHER CLUCKER trademark. In addition to the inexplicable popularity of MOTHER CLUCKER as a name for a restaurant, this case potentially has another important lesson for trademark practitioners.

Among other things, Hot N’ Sweet Concepts is asserting a U.S. Reg. No. 5,288,452 on MOTHER CLUCKERS, that Hot N’s Sweet acquired from Pass Restaurant Group, LLC after Hot N’ Sweet opened for business. The assignment states that the assignment came with the goodwill:

The question is, “did the goodwill in fact pass?” First, the Missouri entity uses MOTHER CLUCKER, while the Mississippi entity used MOTHER CLUCKERS. Second the logos of the two restaurants are quite different:

The Missouri logo is on the left, the Mississippi logo on the right.

Third, the menus of the two restaurants are different:

The appearance of the restaurants are different:

Finally, being 809 miles apart, it seems unlikely that there is any overlap in customers. So while the assignment said that the goodwill passed with the registration, will MOTHER CLUCKER be able to show that it actually did?

Goodwill is more than a magic incantation to recite when transferring the mark, there must be some basis to conclude that the meaning of the mark to consumers also passed with the assignment. It’s one thing to acquire a potentially blocking mark to remove it as an obstancle,, but quite another to try to enforce it.