Showing posts with label crowded field. Show all posts
Showing posts with label crowded field. Show all posts

Thursday, August 22, 2013

Umami Burger Chain Loses Bid to Block Pizzeria's Use of "Umami"

According to its Wikipedia entry, "UMAMI /uːˈmɑːmi/, a savory taste, is one of the five basic tastes, (together with sweetsourbitter and salty)."  Its linguistic origins are Japanese:  "A loanword from the Japanese (うま味), umami can be translated "pleasant savory taste".

A non-profit organization, the Umami Information Center (UIC) was established in 1982 in order to convey accurate information about umami as a basic taste. According to the UIC, the umami flavor is attracting the attention of chefs around the world, in part due to the boom in Japanese food.

However, the word has not left those American chefs trying to brand it into a trademark with a very pleasant taste in their mouths.

The gourmet hamburger chain had filed a trademark infringement case against Umami Mia Pizzeria, LLC in federal court in Austin, Texas. The Umami Burger chain boasts numerous locations in high-end areas in southern and northern California, as well as in Miami, Florida and Greenwich Village, New York.

According to its website, Umami Burger's founder Adam Fleischman developed the high-end burger restaurant concept dedicated to the all-American classic food after developing a palate for fine wines and managing some of Los Angeles' finest wine bars. He opened his first Umami Burger on La Brea [California] in 2009.

Its menu boasts burgers covered in "house-made truffle cheese," "port-caramelized onions," and even "Welsh Rabbit burgers." The New York City establishment boasts a 3 hour wait.

The Texas upstart, Umami Mia Pizzeria is located solely in Austin, and offers a more pizza-centric menudevoid of any type of hamburgers.

After holding a hearing, Federal District Court Judge Sam Sparks was apparently unconvinced that UMAMI could function as a trademark in this instance, and rejected the argument that consumers would likely be confused into associating the restaurants.

It is worth noting that Fleischman's recent difficulties in successfully monopolizing "UMAMI" as a trademark are not novel, and the word has endured a tortured history under U.S. trademark law.

For example, in 1995, Tucker Food Products, Inc., a Missouri company, had sought to trademark the word UMAMI in connection with sauces and marinades, volunteering that the "English translation of 'UMAMI' is 'deliciousness', 'taste', 'flavor' and/or 'relish'."  The mark was approved for publication, but Tucker never filed any statement of use, so the mark was later deemed abandoned.

Subsequently, the trademark "UMAMI" became successfully registered in 2009 by Mastronardi Produce, a Canadian company, in connection with tomatoes.

Initially, the Trademark Office deemed the word UMAMI "merely descriptive" as used in connection with tomatoes and refused Mastronardi's application on the basis that the term UMAMI merely described its taste.  According to the U.S. Trademark Office, UMAMI "is sometimes considered to be a fifth basic taste along with sweet, sour, salty, and bitter."  Further, ripe tomatoes are apparently rich in components that lead to UMAMI.

However, Mastronardi's trademark lawyers were able to convince the Trademark Office that "UMAMI TOMATO" currently has no particular linguistic significance in the trade or industry, and as such, is not descriptive of anything in particular about tomatoes. By further offering to disclaim any rights to the word "TOMATO," the Trademark Office permitted the mark UMAMI to become a registered trademark for tomatoes.

Subsequently, Fleischman was also able to register multiple federal trademarks on "UMAMI CAFE," and "UMAMI BURGER." He is apparently now attempting to register "UMAMI CHIPS," and "UMAMI ENERGY" (for energy drinks).

But Fleischman has company.  Many other companies and individuals have been similarly attempting to register "UMAMI BEER", "UMAMI SUSHI", "UMAMI OYSTER", and "UMAMI TSUNAMI" (for condiments).

The recent battle in Austin over use of the word is clearly not the end of the conflict. Even though Judge Sparks denied Fleischman's bid to stop Umami Mia Pizzeria, that is only a preliminary decision.  A full trial on the merits is expected in 2014.

Wednesday, July 18, 2012

When "Groupies" Attack: A Somewhat Crowded Field

According to the Urban Dictionary, "groupies" are individuals involved in obsessive adoration of entertainers such as musicians, actors, athletes, and even political figures. Typical "groupie" behavior is often juvenile, including even attacking one another or the very performer they supposedly admire.

A few companies have recently become involved in legal attacks on one another over who gets to own the word "groupie" and words that sound a lot like it in connection with emerging technologies.

In 2004, a Cambridge, Massachusetts company applies for "GROUPE" and "GROUPEE" in Classes 38 and 42 for online chat rooms and software.  It's domain name lives on as a music fan site, but its business doesn't.

Then in 2008, a New Jersey based startup applies for its own trademark registration on "GROUPIE" for computer application software for mobile phones in Class 9.  Groupie is apparently an iOS and web application that lets people create both public and private groups, and allows people to message back and forth and meet each other.  It has about 60,000 users so far.  

In 2011, GroupMe launches after winning TechCrunch Disrupt’s hackathon.  It is an application resident on iOS, Android, Windows Phone 7, BlackBerry and the web, and is more focused on private group messaging.  According to one report, GroupMe has become one of the darlings of the fast-growing group messaging application market, getting $10.6 million from Khosla Ventures and lots of press for its products, which just got an update to version 3.0.
Part of Specimen Submitted to Trademark Office
A tipping point is reached when GroupMe files for a federal trademark registration on its name, in connection with software capable of causing transmission of a message from a message originator to a group of recipients.  The legal dispute originates before the United States Trademark Trial and Appeal Board, when Groupie files an administrative Opposition Proceeding against GroupMe's pending application.  Now, the dispute has escalated into U.S. District Court in Manhattan, with GroupMe firing back, seeking a Declaratory Judgment of non-infringement from a federal judge to resolve the "cloud of uncertainty" hovering over the mark.

Add to the mosh pit Yawma LLC, an Oregon corporation, which in 2010 applies for "GROUPEES" for computer software website for flash sales of digital entertainment media including music and games in Class 9. successfully raises significant amounts of money for charity from many artists and supporters, and may have a viewpoint on all this, as well.
Source:  GoGiiGames

Finally, Shannon Tweed (from Family Jewels) has a mobile application game called "ATTACK OF THE GROUPIES" that can be played on iPads, iPhones or PC's (you just can't make this stuff up).

The lesson here is that distinctiveness is determined both by the relatedness of the mark to the product or service being offered under that mark, as well as by the number of similar marks for similar products.  

When numerous sellers of similar products use similar trademarks, those marks become difficult to distinguish and protect. Trademark professionals call this situation a “crowded field,” and it can present serious marketplace and legal problems, as is clear from the situation here. Absent a quick settlement, the parties may now spend years, and hundreds of thousands of dollars, litigating over who has the final right to legally own the mark.

Source: GreenGroupies Website
No word yet from the company that apparently owns the trademark for "GREEN GROUPIES" in connection with eco-friendly children's clothes on whether it will jump into the fray, just to keep things interesting.