At the risk of becoming known as the attorney who only blogs about ice cream-related IP, I want to bring your attention to a pending case in the Western District of Texas. There, Amy’s Ice Creams, Inc. and Amy’s Kitchen, Inc. are embroiled in a trademark dispute that is headed to trial.
You might recognize Amy’s Kitchen from the freezer section of your local organic grocery store. Since the late 1980’s Amy’s has made primarily vegan and vegetarian frozen meals. While the company started in California, its products are distributed throughout the country, and it owns federal trademark registrations for “Amy’s” and “Amy’s Kitchen” for its frozen meal products.
If you have ever been to Austin, you might recognize Amy’s Ice Creams from its 13 ice cream stores, neon cows, and eccentric “only in Austin” staff (and yes, you might have seen them in Houston, too). Amy’s Ice Creams has also been in operation since the 1980s in Texas, selling ice cream and other dessert items. Amy’s Ice Creams has no federal trademark registrations, but it does have Texas-registered trademarks for “Amy’s” for ice cream and other frozen confection.
Where In The World Is My Protection?
What’s the problem? Well, Amy’s Kitchen has started branching into the dessert arena, specifically with a “non-dairy ice cream” to be sold in grocery stores, including stores in Texas, and it has applied for federal trademark registrations covering those products.
At the same time, Amy’s Ice Creams has applied for federal registration of its “Amy’s” marks for ice cream and other dessert items. Each has opposed the federal registrations of the other, and Amy’s Ice Creams has sued Amy’s Kitchen for trademark infringement based on its sales of the non-dairy ice cream product in Texas.
Amy’s Ice Cream has only ever been sold in Texas, so its trademark protection under common law and by her Texas registration is limited to that geographic area. But as a business grows, it might seek to expand beyond its traditional geography and look for greater trademark protection by registering a federal trademark, as Amy’s Ice Creams now wants to do.
All Frozen Food Is Not Dessert
At the same time, the marks registered by Amy’s Kitchen are limited to the products described in its various registrations, which have never included ice creams. As Amy’s Kitchen has expanded its product lines over the years, it has added new registration classes and product descriptions, as trademark owners do when their product lines expand.
Now, a jury is going to have to decide: Is there a direct conflict here, would there be consumer confusion, and if so, who gets to use “Amy’s” for frozen desserts?
Weekly Special On Trademark Law
What’s the take away here? There are three, actually:
1. Be mindful of the limitations on your mark
If you are only doing business in one state, understand that you really only have trademark protection in that state. If you are Penny’s Pickles in California, you probably can’t stop Penny’s Pickles in Pennsylvania from doing business. For the most part, that probably won’t matter since your respective customer bases will be different but understand that expansion may cause problems down the road.
2. Pay attention to your registration classes and descriptions
If you are using your mark to sell frozen pizza and limit your registration to that, you probably cannot stop someone from using a similar mark to sell cereal. Choose classes and registration descriptions with potential expansion in mind. Remember that for a federal registration, you can register before you use a mark based on your intent to use it.
3. Try choosing a trademark and brand that is not likely to be repeated
Much as a personal name feels like your own, there are lots of entrepreneurs out there who probably share your name. Be creative when it comes to naming your company.
The best way to avoid all of the above is by talking to your IP lawyer at the outset. It can save you a lot of time, money, and aggravation in the future and allow you to focus on your growing business, not reading through court papers.