The “Skinny” on Protecting Trademarks

Chris Hanslik, Molly Hust

May 16, 2017

Almost every company uses a “trademark” of sorts in promoting its goods and services. And, while the law affords protection for trademarks, whether a court will extend protection to a trademark user depends upon what the company has done to protect what it believes to be something of value to its business.

So, what do you do to protect a trademark?

Under both Texas and federal law, a trademark is a word, name, symbol, device, or any combination of these used by a person to identify and distinguish the goods–including a unique product–from the goods manufactured or sold by others, and to indicate the source of the goods. The exclusive right to use a trademark belongs to the company who first uses it in connection with the sale of specified goods.

To have a protectable trademark, the word or phrase must be distinctive or be identified with a particular source through its use in commerce. Unlike owners of patents or copyrights, trademark owners do not have exclusive use of a mark, and it may only be protected to prevent the use of a mark by others if the use is in a manner likely to cause confusion, mistake, or deception among consumers as to the source of the goods or services.

A company that believes it owns a protectable mark may bring a trademark infringement claim against those who seek to use the mark in violation of the company’s rights. A company has a legally cognizable trademark infringement claim under the Texas law if:

  1. 1. The name or mark is eligible for protection.
  2. 2. The owner is the senior user of the name or mark.
  3. 3. There is a likelihood of confusion between its name or the mark and the other user’s name or mark.

The party seeking protection of a trademark has the burden of proving the mark has acquired secondary meaning. This can be difficult to show. Ultimately, the party must show that the mark or name denotes to the consumer a single thing coming from a single source. Evidence such as the amount and manner of advertising, volume of sales, and length and manner of use may be used to show circumstantial evidence relevant to the issue of secondary meaning.

To determine whether an allegedly infringing use is likely to cause consumer confusion, courts will consider the following factors: (1) the type of trademark; (2) the similarity of design; (3) the similarity of product; (4) the identity of retail outlets and purchasers; (5) identity of advertising media utilized; (6) defendant’s intent; and (7) actual confusion.

An example of whether a competing mark creates a likelihood of confusion is currently playing out in federal district courts in North Carolina and Texas. Competing snack foods companies Amplify Snack Brands, Inc., the company responsible for SkinnyPop, and Synder’s-Lance, Inc. are currently embroiled in trademark litigation regarding the use of the word “skinny” in conjunction with the sale of popcorn.

Snyder’s-Lance filed a preemptive declaratory judgment action in federal court in the Western District of North Carolina asking the court to find that Snyder’s-Lance’s “Metcalfe’s Skinny” does not infringe upon SkinnyPop’s trademark rights. SkinnyPop responded by filing a competing action in the Western District of Texas, also seeking a declaratory judgment that the use of “Metcalfe’s Skinny” is a violation of SkinnyPop’s trademark rights, and seeking damages for trademark infringement, false designation of origin, trademark dilution and unfair competition.

SkinnyPop has previously taken steps to protect its brand. For example, SkinnyPop successfully negotiated the abandonment of a U.S. trademark application by a potential infringing company for use of “Skinny Calories” in connection with the sale of popcorn, as well as the phrase “Hi I’m Skinny Pop.” SkinnyPop caused another company to permanently cease use of “Skinny Chippers” in connection with popcorn products, and a grocery store to cease use of the mark “Lite n’ Skinny” in connection with its store-brand popcorn products.

Altogether, SkinnyPop identifies eleven instances where it successfully defended its trademark of “skinny” in connection with the sale of popcorn.

Although other courts have previously held in SkinnyPop’s favor under similar circumstances, it remains to be seen whether the North Carolina or Texas district courts will follow suit.

In these types of disputes, it is also important to remember that trademark rights can be lost. Abandonment is a common defense to a trademark claim. In fact, a party may seek cancellation of a registered mark at any time if the mark has been abandoned by the mark’s owner.

However, trademark owners can take steps to protect their trademarks by notifying potential infringers of their infringing use of a trademark, by registering their trademark, and by suing to protect their trademark rights when necessary. This protective conduct is typically used as evidence to refute an abandonment argument. Therefore, it is critically important that a company that owns a trademark take proactive steps to protect any infringing use.