Edari — who calls her business "my refuge" and "my heaven" — used to be a lawyer and holds up the complaint and says "This is what I was trying to get away from."
Do you think the product names are too similar? Even if they are, there's an argument that they're not "confusingly similar" because Edari makes candies and Mars's CocoaVia is – as you can see at Amazon – a powdered extract in a capsule sold as a dietary supplement.
Although though the linked article says Edari "plans to represent herself and her company," she has a lawyer working with her on answering the complaint, and he says:
“It’s like connecting a vitamin with a candy. Their names might be similar but they just don’t go together.... It’s like Delta. There’s Delta faucets, Delta Airlines, Delta Dental. Nobody connects them.... Nobody would mistake it for candy and it’s not sold with candy... he packaging and pricing are extremely different."But Mars is well-known as a candy company, and doesn't influence people shopping for cocoa supplements? I'm looking at the Amazon page for CocoaVia, and I can't find "Mars" on the page without using command-F, so I'm inclined to think that Mars doesn't want consumers to connect the health/"health" product to its reputation for candy.
Any thoughts — especially from those of you who have experience in the field of trademarks?
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56 comments:
I don't know this person. I'm just reading the local newspaper, which (unsurprisingly) portrays the woman as a sympathetic underdog bullied by the big corporation. But the corporation has legal rights and must defend them to preserve them. The question is the extent of the legal right.
IANAL. But CocoaVaa, as it sounds and spells, would never conflate with CocoaVia in my mind.
I agree with the CocoaVaa's comment though -- If Mars was in contact with her before the Registration Period for the trademark, why didn't they work out something then? (Suspected answer: because then the Mars Lawyers couldn't bill more hours)
"Cocoa" with a "V' sound following it.
Did a Google search of "Cocoa V" and did not get the Mars brand on the first page. Instead: "Cocoa V" -- a fancy New York site for "…luxury, artisanal, hand-crafted dairy-free vegan chocolates, confections, and pastries…"
"Coco V" brings up "Coco V" coconut water.
"Coco Vie" (one letter off) brings up "CocoVie™ Coconut Flour – Cocovie Naturals – Everything Coconut".
A lot of brands already in that phonetic neighborhood...
I am Laslo.
And she was not sued in Madison. Madison is a popular national IP venue but not quite like ED TX. She was sued in VA. Hugely abusive and she has filed a motion to change venue. I sure would like to know the defendant's business contacts to VA. This is not Cadbury v. Mars.
I will not discuss the IP venue case argued last week in SCOTUS, but this case is really disgraceful.
The IP giants like Apple have labeled some plaintiffs as patent trolls. This is the flip side.
This case somewhat reminds me of the Toronto Blue Jays suing the Creighton Bluejays for our new Billy Bluejay logo. The MLB team dwarfs Creighton in athletic revenue.
Correction. Creighton was not sued. Toronto Blue Jays just opposed Creighton's mark at the PTO.
I cannot see anything like this without thinking of McDowells in Coming to America.
https://www.youtube.com/watch?v=XrwZORNA-k0
-XC
I would expect it to taste like chicken, if I'm being honest. Coq au vin.
Two winners in this:
Mars. And Edari's lawyer.
Fell off the wagon I see, and not even for the old familiar touch of Con-law.
I'm not familiar with CocoaVia, (the mars product) but looking at it at online it does look like it is not marketed as a food product, but rather a nutritional supplement. I think a jury could be persuaded to see the difference between a chocolate morsel and a powdered packet you add to water, milk, or a shake to get the health benefits of chocolate flavanols.
I'm guessing Mars had their mark registered well before CocoVaa was even started, but that doesn't give them unlimited rights to the mark in all circumstances. It has to be tied to a specific type of product, and there has to be an already existing use of the product, or a bona fide intent to use it in commerce.
I'm surpsied they didn't settle and maybe agree to let her use her mark without question in and around the Madison Area, and maybe to a more limited extent online. Stories like these make people dislike big companies and the actual potential gain, despite statutory awards is minimal. Never mind the problem of collecting against a business that is just starting out even if you do get a judgment.
Not to be cynical, but the more powerful entity tends to prevail -- see Apple Records versus Apple Computers for further detail.
How far does CocoVaa need to go to be free of infringement?
CocoVaaa?
CocoVaaaa?
CocoVaaaaa?
CocoVaaaaaa?
CocoVaaaaaaa?
CocoVaaaaaaaa?
CocoVaaaaaaaaa?
CocoVaaaaaaaaaa?
I think you see where I am going with this.
I am Laslo.
By the way, if her lawyers want to use my Research from 7:33 AM I will gladly bill them at a reasonable rate.
I am Laslo.
"The Vault Dweller said...
I'm surpsied they didn't settle and maybe agree to let her use her mark without question in and around the Madison Area, and maybe to a more limited extent online. Stories like these make people dislike big companies and the actual potential gain, despite statutory awards is minimal. Never mind the problem of collecting against a business that is just starting out even if you do get a judgment."
Mars has more $1 billion products than any other company. And is family owned. So is less vulnerable to boards etc. They don't want her using it for whatever reason, and probably are fine with bankrupting her.
I'm more concerned that she's representing herself. Not so a "fool for a client" thing, but more that trademark law isn't her background.
I hope she at least is consulting with a lawyer who does specialize in it. She may be acting against her best interests in letting this go to court. Especially if she's letting pride or stubbornness drive her away from any settlement.
Not a TM expert but any competent TM lawyer would have warned her not to use Mars name for Cocoa-related product. Google Mars & Cocoa - half the hits are for her and half for Mars corporation, so possibility of confusion.
OTOH, it is not always crazy to trespass like this; lots of free publicity for her product and those who hate big corporations might buy out of sympathy. Typically, she will end up settling with Mars based on agreed phase out of use over 3-6 months and not have to pay much.
"But CocoaVaa, as it sounds and spells, would never conflate with CocoaVia in my mind."
You made them more similar. The first one is CocoVa.
Does her website give her minimum business contacts with Virginia? International Shoe and Worlwide Volkswagen?
Mars did register their CocoVia mark back in 2012, but the goods and services it is listed to cover are, "G & S: Dietary and nutritional supplements, powdered nutritional supplement drink mix, powdered dietary supplement drink mix, and nutritionally fortified beverage mix, all made in significant part of cocoa. FIRST USE: 20101031. FIRST USE IN COMMERCE: 20101031"
Now CocoVaa was filed back in 2016 and the goods and services it claims to cover are, "G & S: Candy; Caramels; Chocolate candies; Chocolate fondue; Chocolate mousse; Toffee; Brittle; Chocolate confections, namely, bonbons, bars, barks, chocolate covered nuts, chocolate covered coffee beans, drinking chocolate; Confectioneries, namely, snack foods, namely, chocolate; Filled chocolate. FIRST USE: 20160601. FIRST USE IN COMMERCE: 20160726"
""Cocoa" with a "V' sound following it...."
To a lawyer, "v" looks like the middle of the name of a lawsuit. Not what I'd use in branding.
Coco v. A.
Cocoa v. Ia.
"Google Mars & Cocoa - half the hits are for her and half for Mars corporation, so possibility of confusion."
I Googled that, and saw nothing on the first few pages relating to her company -- just the Mars brand.
I am Laslo.
I confuse both of them with Coco Chanel.
I am Laslo.
The Vault Dweller is looking in the right direction.
Probably mentioned here before, but best TM letter in history was from Jack Daniels, which got a huge amount of free/great publicity for the way they handled it. http://volokh.com/2012/07/26/more-proof-if-proof-were-needed-that-jack-daniels-mellows-you-out/
If there is a term for opposite of Streisand Effect, it would be called Jack Daniels Effect. Great example of in-house counsel being conscious of marketing and brand.
Looking at Ms. Edari's website she appears to be a UW Law school alumnus graduating in 2001.
"I sure would like to know the defendant's business contacts to VA."
The article contains the answer. "Mars... has its headquarters in McLean, Virginia."
The idea that there are minimum contacts for due process would be that actions in one state are injuring an entity in another state, but the last I looked the defendant needs to have purposefully directed itself at the state. Mars was in Virginia when it (supposedly) incurred the injury, just like Shirley Jones was in California when the National Enquirer besmirched her. But the National Enquirer people knew they was talking about Shirley and knew she was in California, and Edari doesn't seem to have thought she was even doing anything to Mars.
I'd be tempted, writing that brief, to make jokes about how Mars is so far away.
Anyway, I haven't researched the details of personal jurisdiction cases in a long time, but the easiest solution for the judge is just to grant a motion to transfer the case to Wisconsin.
Laslo Spatula said...
I confuse both of them with Coco Chanel.
Interesting. I confused both of them with Carlos Santana for Oy Ye Coco Va.
"Looking at Ms. Edari's website she appears to be a UW Law school alumnus graduating in 2001."
Thanks. I don't remember her, and I didn't know that when I wrote the post. I'm not representing her and don't want to look like I'm boosting her. I just blogged this as a normal article that came up in the news. I'd never even heard of the business.
Sorry one of our graduates didn't like practicing law, but not really. It's part of law school that many people won't like it. Good to get the word out. Try to figure out whether you really want to practice law. Anyway, there is (or can be) benefit to practicing law and then moving on to something else.
Judge will definitely change venue to Madison. "Get off my docket."
I Googled CocoVa and the Wikipedia article for Coq au Vin came up on the first page.
I think the "v" sound suggests itself because of the familiar food dish (whether the person thinking about it realizes that or not).
CO-CO... the "v" as the next sound feels natural and right.
I also naturally follow the CO-CO sound with "p" because of CocoPuffs, and "p" and "v" feel very close. Think about what sound you'd use for the next syllable after CO-CO. Good chance it's "v."
No sure how any of that relates to trademark cases. There must be a chocolate shop somewhere called Cocoa Van.
Seems like the case belongs in Wisconsin and not VA. CocoVaa the defendant resides in Madison and doesn't appear to have sold any product in Virginia. All of her actions have taken place in Madison in regards to the mark in question.
One might think that the intent of Mars filing in Virginia was to unnecessarily burden and hassle the little business-woman who resides half-way across the country. To force her to incur the time and expense of finding an attorney in and around Virginia to file and appearance and motion to transfer venue.
But maybe they have a good-faith argument as to why Virginia is the proper venue to file this lawsuit, even though on the face of it, it appears that CocoVaa solely operates in and around the Madison area, and while they have a website do not appear to sell directly to any customers over that website and merely use it for informational and advertisement purposes for their shop and products.
Yes: Cocoa Van.
Similarity of names causing confusion in the marketplace: my movie covered that.
JOE: I fucked a black girl once. Funny thing was that her name WAS Cinnamon. She was a stripper.
FRICK: Of course she was.
JOE: She later got in a fight with a Mexican girl at the club who called HERSELF Cinnamon. You can’t have two Cinnamons at the same strip joint. It just doesn’t work.
KELLER: So what happened?
JOE: The bouncer broke it up before there was a clear winner. But the Mexican girl changed her stripper name to Lil’ Chili.
I am Laslo.
Hmm according to Wisconsin Department of Financial Institutions it looks like there is a CocoVaa LLC, with it's registerd agent being one Ms. Edari. With the registered agent's office being located in Madison, WI.
CocoaVia, CocoVaa, Oye Como Va ...whatever.
“As a female attorney, as a female attorney of color, [it’s a system] that doesn’t want me in it, doesn’t want single mothers in it,” [Edari] says.
So we know she's a liar; I'm guessing she picked that silly name so the conflict would generate free publicity.
Typical of trademark attorneys. Throw it at the "defendant" to scare them even if there's little substance behind it. If it's a small company they don't stand a chance against the deep pockets big asshole. These two aren't even in the same category, but the candle maker is foolish to waste money on a defense unless she can get someone with deep pockets to back her. She should just work out deal for a gradual name change.
Great comments. Especially Laslo: "phonetic neighborhood" is nice.
I think Edari has a reasonable defense here. Not much likelihood of confusion. Different names, different sounds, different products, different markets, different channels of trade. Maybe none of these taken singly is enough but it gives her a lot of hills on which to make them advance at great cost. Maybe their morale will break.
I wonder why they thought this was a good idea. Does Mars always act like a junkyard dog over potential IP encroachment? Did they try sending letters or offering some work-around, e.g. license or consent? Their legal team could do stuff like that without breaking a sweat. And I strongly suspect their lawyers did not pull the trigger, some incredibly smart MBA who needs to show how he clanks when he walks, decided it would be a great way to build their brand. By beating up on a local entrepreneur with a great story.
My bet is that this settles out pretty quickly.
My first inclination was that she has a tough cocoanut to crack. But after checking the marks on TESS, she may well have a strong defense. Here's here registered mark:
Word Mark COCOVAA
Goods and Services IC 030. US 046. G & S: Candy; Caramels; Chocolate candies; Chocolate fondue; Chocolate mousse; Toffee; Brittle; Chocolate confections, namely, bonbons, bars, barks, chocolate covered nuts, chocolate covered coffee beans, drinking chocolate; Confectioneries, namely, snack foods, namely, chocolate; Filled chocolate. FIRST USE: 20160601. FIRST USE IN COMMERCE: 20160726
This is the Mars mark:
Word Mark COCOAVIA
Goods and Services IC 005. US 006 018 044 046 051 052. G & S: Dietary and nutritional supplements, powdered nutritional supplement drink mix, powdered dietary supplement drink mix, and nutritionally fortified beverage mix, all made in significant part of cocoa. FIRST USE: 20101031. FIRST USE IN COMMERCE: 20101031
The most significant legal distinction is that these marks are not registered in the same Class. Hers is in IC 030; Mars is in IC 005. Mars could easily have opposed the registration after it was published, but according to the USPTO, the mark was unopposed before the examiner in what is called an Office Action.
Mars had a registered mark in the 030 Class, but they abandoned it in 2007.
I've read the complaint. Mars is represented by Greenberg Traurig, so she has her hands full. They make a strong case based upon their prior use and marketing of the mark in connection with selling chocolate flavorings and bars, but they'll have some 'splainin' to do with exactly what products are connected with the mark today and why they let their mark in her Class expire.
I suspect this is why they didn't challenge in the USPTO. But they are also claiming common law trademark and unfair competition. That's where her biggest uncertainty is. Had she been my client, I would have talked her out of the registration for just this reason. Why take the business risk of a ruinous litigation with a company like Mars who can pay Greenberg Traurig out of the change in the coffee machine?
- Krumhorn
IAAL, and I used to litigate trademark cases. A couple of thoughts:
The likelihood of Mars ultimately prevailing (in the unlikely event this does not settle) depends on some key facts. First, does Mars have evidence of actual customer confusion? Although the test for infringement is "likelihood of confusion," the best evidence of a likelihood of confusion is actual confusion. Second, is the CocoVia brand "famous," such that Mars can make out a dilution claim (that is, even if people are not likely to be confused about the product itself, because the products are different, will they think that her product is affiliated with Mars because of the similar name)? For example, "Coca-Cola" is famous, you cannot use that name to market anything, even spark plugs. "Freedom" is not a famous mark. While you can trademark "Freedom Fireworks" and prevent others from using that name to sell fireworks, you cannot prevent someone else from using the name Freedom to brand cameras or purses or anything else.
On venue, the question is the defendant's (i.e., Edari's) contacts with the forum, not Mars' contacts. Does she market and sell product in Virginia (even over the internet)? Or are all her orders in the Upper Midwest?
Feedom89:
Excellent question. I wonder if Mars had any evidence of confusion before it filed its Complaint; a survey or something. As to venue, I doubt the defendant has sold a single chocolate, over the Internet, in VA.
They have pled sufficient contacts with VA in my opinion.
- Krumhorn
"They make a strong case based upon... marketing of the mark in connection with selling chocolate flavorings and bars..."
Is that true? Looking only at the Amazon page for the product and seeing the packaging, I thought they avoided inviting a connection between the supplements (a health product) and their candy (which doesn't suggest health at all).
"They have pled sufficient contacts with VA in my opinion."
Why do you say that? You need purposeful contact by the defendant. What is that?
Plus, they have also filed for cancellation in the TTAB In Alexandria.
- Krumhorn
Great further facts and insights, especially "Feedom89" comments on actual confusion and famous marks.
This stuff strengthens my opinion that IF she can afford the fight, and doesn't screw it up, she will make them regret bringing this.
1. The Bullying Billionaire narrative is hers for the taking.
2. Based on lack of contacts with plaintiff's home state, I think she is likely to win the venue fight. Although maybe Mars has bought the local bench?
3. Maybe Mars can show actual confusion; but how? Did it do an internet survey of people who Googled "Coco" or some other relevant character string? This is unlikely to be a series of affidavits from Mrs. Smith and Mr. Jones who wandered into Edari's shop hoping to buy some Mars products and were tricked into accepting her stuff. The relevant evidence is going to be some abstract cyberspace argument about search results. And even there, I gather she did not sell outside her own back yard.
4. Never mind the survey, if this piece of ground was so precious to Mars, why did it walk away from it by abandoning IC 5? A whole LOT of 'splainin' to do there.
5. The whole thing looks badly conceived. But wars fought for honor are sometimes the most vicious.
Why do you say that? You need purposeful contact by the defendant. What is that?
Specific jurisdiction in a trademark case does require purposeful direction as you said, and the three usual three prong test must be met. But operating an interactive website selling infringing product across state lines seems to settle all that hash in ways that other types of enterprises have to struggle with. Problems like conduct expressly aimed at and knowingly causing harm in the forum state wash away when dealing with a website.
The exchange of letters prior to registration probably establishes the 'knowingly' part.
These are broad strokes, and I'm not a litigator, but she will have her work cut out for her.
- Krumhorn
Is that true? Looking only at the Amazon page for the product and seeing the packaging, I thought they avoided inviting a connection between the supplements (a health product) and their candy (which doesn't suggest health at all).
I understand your point. In the complaint, Mars details extensive marketing and products that directly compete with CocoVaa products. The one difference might be that hers is not packaged goods. Still, it's chocolate! ....in a space with two marks: CocoVaa and CocoaVia.
That said, it's not at all clear that the early use of the mark in connection with competitive products is current today. They let their mark in the 030 Class expire.
She has a very practical problem. She is up against a well-funded prosecution of trademark, common law trademark, and unfair competition claims. In my opinion, she was badly advised when she refused to drop her application when notified by Mars of their view of her infringement. She has almost no upside and a terrible downside risk.
- Krumhorn
VA is a forum non conveniens.
I think she is likely to win the venue fight.
As you probably know, venue issues are settled differently from jurisdiction. Venue in trademark litigation could easily be settled by establishing that a substantial part of events occur in the Eastern District of VA by pointing out that the substantial confusion in the minds of consumers in that district is likely. That could conceivably place venue in many districts. Many courts will agree that a substantial part of events occur in the district of the trademark owner.
- Krumhorn
I WANT to be on Ms. Artisanal Chocolate Co of 2016's side, but on this one, I am questioning whether this isn't deliberate to exploit individuals hunting for similar names. Just look at how many times the CocoaVia (Mars' product) name has been misspelled on this post and comments! It is a certainly that she is going to get hits from their advertising. That's the reality of modern internet marketing, and it does seem to me to be the type of thing that copyrights are supposed to cover.
And when I googled and found the Mars product, it came with a bunch of recipes:
https://www.cocoavia.com/recipes/cocoavia-recipes/espresso-mocha
So I do not think that the Mars claim is really so far afield.
I am also going to cynically point out that I doubt that she expects to win this in court, but that she is using it as marketing for her company's products, at least locally. I suspect that it will win her customers - overall she may have decided that it would help with marketing either way.
The Mars product is marketed not as a vitamin pill, but as a sort of super-cocoa for use in foods that profit from the Big Chocolate connection.
Needs to buy a vowel.
Cocoa Via is robbery. If they sell sufficient amounts, Mars should keep attention off it. But then..lawyers gotta make themselves look useful.
It’s like Delta. There’s Delta faucets, Delta Airlines, Delta Dental. Nobody connects them....
Delta was a word long before it was part of a trademark. Persons who choose a tradename containing a pre-existing word as part of the name must accept exclusivity exceptions, which is why Delta Airlines haven't taken Delta Dental to court. If Delta Airlines had tried to style itself as simply Delta the application for registration would have been rejected. Generally, one can't copyright an existing word or a new word created from an accepted algorithm, such as chemical names. That's why fluoxetine hydrochloride is also called Prozac. If you are Delta Airlines you may safely use Delta by itself in advertising or correspondence if the full registered name appears in the same document or advertisement. For example, I remember being driven to the airport and seeing a huge billboard which showed a fabulously sexy stewardess and a tanned and handsome young executive-type giving each other the eye as they approach an awaiting jetliner. Across the top, it read "Fly United". The implication was clear to even my 12-year-old brain — if you're a well-heeled businessman whose good looks and charm approach that of our male model here you stand a chance with our super-deliciously sexy young air hostesses, but only if you buy a ticket. They got away with that because the full tradename appeared in smaller text on the lower right, United Airlines.
If you make up a word and apply copyrights, you pretty much have exclusive rights to it for decades. Zool is a Sumerian demigoddess and a herald of Gozer the Destructor, at least according to the movie script written by the late Harold Ramis and Dan Ackroyd. If you want to use Zool or Gozer in your script movie script, or comic book, or video game, you'd better ask permission and fork over some cash first. You might get away with Vinz Chlortho, however, because Vinz resembles Vince, the familiar form of the common name Vincent.
Anyway, the comparison made by Syovata Edari is interesting because both her candy and the Mars product have used pre-existing words, though Edari is perhaps on firmer ground. The Mars thingy is CocoaVia, just two dictionary words rammed together. By trademarking using existing words they have accepted limited exclusivity; basically, they are protected from someone else calling their product CocoaVia, and that's it. Edari's is CocoVaa; coco is how somebody might misspell cocoa or it could be a given name as in Coco Chanel, but vaa is nothing in English. There is an exception to the principle here. Courts have ruled that if the association of a tradename with a particular business has entered common speech, the holder of the tradename has exclusive rights. McDonald's enjoys such exclusive rights. Even a guy whose name is McDonald can't open a restaurant and call it McDonald's Restaurant and expect protection from lawsuits. He'd better go into the plumbing trade instead and be sure to always call it McDonald's Plumbing Company and never just McDonald's. The Mars claim doesn't have that advantage. 99.999% of the public have never heard of CocoaVia and those who have mostly assume it's either candy or a beverage.
Mars hasn't much of a leg to stand on, however, they can win by outlasting Miss Edari. That's what they're counting on.
Q
I can't begin to tell you how screwed up our IP system is for patents and trademarks. Ever hear of the PTAB? The deck is stacked in favor of the big companies in such a fashion that it is killing inventions in America.
Mars hasn't much of a leg to stand on, however, they can win by outlasting Miss Edari.
I like parts of your analysis, but I disagree with the result. No one can trademark a common noun that describes a product. Nor can anyone trademark a geographical place name. These are neither. To my eyes, CocoVaa and CocoaVia are designed wordmarks that are suggestive of what they are selling. But they are too close and confusion between the two is likely if they are designating the origins of similar products or potentially overlapping product areas.
For example, one cannot use the name Exxoon for a gas and oil enterprise. Or ExxonVia for that matter.
If Mars still had an active mark in the 030 Class, I doubt very much that her mark application would have gotten past the examiner in the first place. It's just too close. However, Mars has apparently sold a lot of chocolate products under the name CocoaVia for many years. Even if they do not have a current registered mark for those products, they have a very solid common law trademark claim, not to mention unfair competition claims.
Ultimately, she may be able to retain her mark because of the technical Class business, but I'm having trouble seeing how she can realistically use it.
That was her mistake from the gitgo.
- Krumhorn
I'll defer to the rock music experts here, but wasn't there a rock or r & b song with part of the lyric "Shimmy Shimmy Coco Va" Mind you, I'm not trying to muck things up here.
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