Despite Legal Threat, Rights to MUMBO Sauce Trademark Stay in Chicago

Argia B. Collins' Chicago Area Restaurant

"Mumbo sauce" is sometimes used as the colloquial name for a tangy sauce served in Washington, D.C. restaurants and local eateries. However, a legal challenge to the validity of the name as a unique trademark appears to have been resolved in favor of the Windy City as the owner's locale.

The Washington Post describes the D.C. sauce's flavor as somewhere between barbecue and sweet-and-sour sauce.  The sauce is also sometimes called "Mambo sauce."  It is a versatile condiment that can be used for anything from fried rice to ribs or wings.

The Chicago Tribune reported in 2007 that Argia B. Collins, who died in 2005, and who had been one of Chicago's premier African American restauranteurs, first coined the term in the 1950's.  Collins' heirs ultimately transferred the rights to the name to Select Brands, LLC.

According to the Select Brands' website:  "A perfectionist when it came to his restaurants, Argia B. was not satisfied with the bland, watered-downed sauces served in other establishments or the tart, over-powering national brands sold by restaurant supply houses....Drawing on his southern roots, he wanted to create a sauce with the savory flavors reminiscent of the homemade Sunday dinners that he had enjoyed on his family's farm."

An image displayed on the Select Brands' website documents Collins' use of "Mumbo Bar-B-Q Sauce" in 3 flavors.

Capital City's Mumbo Sauce

In the 1990's, Select Brands LLC filed for a federal trademark on "MUMBO" for barbecue sauce in International Class 36, and it was granted.

Subsequently, a petition to cancel this trademark on the basis that it had become the "generic" name for a type of sauce was filed by Capital City, LLC, the makers of Capital City Mumbo Sauce, a D.C.-based company.

The petition cited printed materials taken from several different websites that showed a variety of sauces described as unauthorized "Mumbo sauces."

The Trademark Trial and Appeal Board was not persuaded, however, finding that while this evidence showed "some generic use of the term 'Mumbo' in connection with sauces," that evidence consisted of printouts from only a few websites, and was not an overwhelming evidence of widespread generic usage.

Further, the Board seemed persuaded that Collins' heirs had undertaken serious efforts to police what they deemed as improper use of the trademark, and did not find the level of widespread and unrestricted usage necessary to deem a registered mark totally unworthy of protection.  The Board refused to cancel Select Brands' trademark.

The federally registered Mumbo trademark will therefore remain owned by Select Brands LLC.

However, in the event that Select sues Capital or the other unauthorized Mumbo sauce users for trademark infringement, the jury and judge would get the final say in the matter, as genericness as well as lack of likely confusion can be used as complete defenses in an infringement case in court.

Delay in Resolving ABSOLUT Trademark Dispute Raises Thorny Issues

The Everett, Washington hair salon's name/logo

Self-help guru Napoleon Hill once wrote that "procrastination is the bad habit of putting off until the day after tomorrow what should have been done the day before yesterday."  A number of parties involved in a trademark dispute in the state of Washington may agree with that statement more than they would care to.

According to recent reports, when Jesse Skittrall purchased the small Absolut Hair and Makeup salon in Everett, Washington in 2009, he was informed by Gayle Pratt, the former owner of the salon, that Vodka giant Absolut had sent a formal cease and desist letter in 2005, but didn't follow up on its demand that the salon change its name.

Consequently, Pratt evidently concluded that the matter was not being pursued by the vodka maker, and the hair salon management changed hands.

However, at the end of July 2013, the vodka maker finally followed up, and reportedly gave Skittrall until January 1, 2014 -- 6 months -- to completely change the salon's name, or else face a federal lawsuit for trademark infringement.

Skittrall has appealed to the community to raise money, and appeared on local radio stations, complaining that the vodka company had "come out of nowhere."

On GoFundMe.com, Skittrall apparently seeks as much as $20,000 to fund the name change, but as of today, has raised only $125.  It is not clear why it would cost $20,000 for the business to change its name, but the salon would obviously need new signage, a new website and new business cards.

The Vodka Maker's Trademark

On the crowd funding site, Skittrall claims that "I bought the business with this name and existing signage and was not aware of any trademark issues."

But the former owner disputes Skittrall's characterization, saying that she fully informed him of the unresolved trademark dispute back in 2009.

But what of the vodka maker's apparent delay in following up?

Precedent from the Ninth Circuit Court of Appeals, which governs Washington, lays out a clear duty for a trademark owner to act diligently once it has sent a cease and desist letter that has become unresolved.

Otherwise, the trademark owner might face the possibility that its delay in protecting its rights may rise to the level of being "estopped by laches."  The doctrine is sometimes just referred to as "laches," which comes from the French for "laziness."

The Latin phrase "Vigilantibus non dormientibus æquitas subvenit (Equity aids the vigilant, not the sleeping ones (that is, those who sleep on their rights))" is often quoted to help explain the doctrine.

In other words, the vodka maker's delay in pursuing the 2005 matter against the hair salon could have led the former and new owners to reasonably infer that the alcohol beverage company had lost interest in protecting its rights in this instance.

To the extent that the salon owners relied upon that delay to their detriment and suffered prejudice, courts may hold that delay against the trademark owner, not the salon.

The Ninth Circuit Court of Appeals had said in Brookfield Communications v. West Coast Entertainment in 1999:

"Although we have applied laches to bar trademark infringement claims, we have done so only where the trademark holder knowingly allowed the infringing mark to be used without objection for a lengthy period of time. See E–Systems, Inc. v. Monitek, Inc., 720 F.2d 604, 607 (9th Cir.1983). In E–Systems, for example, we estopped a claimant who did not file suit until after the allegedly infringing mark had been used for eight years where the claimant had known of the infringing use for at least six years. See id.; see also Carter–Wallace, Inc. v. Procter & Gamble Co.,434 F.2d 794, 803 (9th Cir.1970). We specifically cautioned, however, that “had defendant's encroachment been minimal, or its growth slow and steady, there would be no laches.” E–Systems, 720 F.2d at 607; accord Carter–Wallace, 434 F.2d at 803 n. 4."

In this case, the delay would appear to be from 2005 to 2013:  approximately eight years.  There is no clear evidence of progressive encroachment, as the local hair salon appears to be largely the same as it was in 2005, despite having new management.

Furthermore, Washington's statute of limitations may also apply here, which enforces a three year statute of limitations to trade name disputes.

Consequently, the vodka maker may face a problem if the hair salon simply refuses to change its name, and invokes these doctrines in its defense. 

The lingering problem for the salon, of course, is that estoppel by laches is a defense that can only be asserted in a lengthy court proceeding, after factual discovery has been exchanged.  And invoking such equitable defenses obviously costs time and money, and litigation comes with no guarantees.

In conclusion, had all the parties more clearly resolved their original dispute back in 2005, more costly headaches for all involved might have been avoided.

Microbreweries Increasingly Battle Over Beer Names as Trademarks

After a long lull following the Prohibition era during which mega-breweries dominated the American beer market for decades, local microbreweries have steadily grown in popularity recently, with thousands of newly operating breweries joining the ranks each year.

However, such microbreweries still only satisfy a modest portion of the American appetite for beer.  Consequently, thousands of struggling microbrewers are trying to capture this highly competitive segment of the aggregate marketplace.

The increasing pressure on this marketplace has made brand differentiation a key concern.  Some commentators have called this conundrum "standing out in a sea of beer."

Consequently, publicized legal conflicts over brands in the microbrewery marketplace have recently arisen.

 

For example, in April 2013, a Grand Rapids, Michigan-based brewery called Brewery Vivant sent a legal cease and desist letter to Tired Hands Brewing Company of Ardmore, Pennsylvania, demanding that the small brewery cease using the name "FARMHANDS" for one of its Belgian ales.

"FARMHAND" is an as-yet unregistered trademark claimed by Brewery Vivant for a French farmhouse-style ale that is very popular in Michigan.  Brewery Vivant owners claims to have experienced an instance of actual confusion at a trade show, leading to the need for legal threats.

The FARMHAND brand has been used by a British Columbia-based microbrewer called Driftwood Brewery, leading to the possibility of international trademark issues down the line.

But the conflict over FARMHAND is not an isolated incident.

In June 2013, West Sixth Brewing of Kentucky and Magic Hat Brewing of Vermont settled a trademark-related dispute that quickly got ugly when it was described as "frivolous," and which escalated to a full-blown federal lawsuit until it was settled by the parties after mediation.

Similarly, Sierra Nevada Brewing Company had a trademark dispute over the "NARWHAL" trademark when it launched "Narwhal Imperial Stout," a move that the Narwhal Brewery apparently opposed.

And when Mother Earth Brewing Co., a craft beer maker in Vista, California, discovered another company in North Carolina with virtually the same name, Mother Earth Brewing Co., LLC, it was forced into filing trademark litigation in the Trademark Office.

Those with long ties to the microbrewery industry lament the need for ongoing legal conflicts over trademarks, citing comparisons to the less collegial tech industry.

According to one attorney who specializes in the alcohol and brewery industries, the craft beer industry "has become swollen," leading to a need for market participants to be more proactive with a coherent and aggressive branding and trademark strategy.