Beauty May Be in the Eye of the Beholder, But Your Trademark Could Be in the Ear of the Listener
Many of us will be eating pecans one way or another tomorrow. It seems to be a staple of our Thanksgiving holiday—pecan pie, candied pecans, pecans mixed in sweet potato casserole and sprinkled on salad greens. Depending on where you live, asking grandma to pass the pecans sounds different:
I am thankful to be able to hear the different ways to say “pecan” all in one day when I wish my family a joyous holiday tomorrow—my relatives live literally coast to coast. Not all is harmonious; however, there are a few in my family who are in a competitive squabble over whose pronunciation is correct.
What does this have to do with your trademark?
The Keebler elves and Murray Bakery got into a squabble of their own over something very similar, the marketing of their pecan cookies (Pecan Sandies and Pecan Shortees respectively.) Keebler sued, claiming Murray Bakery’s “Pecan Shortees” were violating Keebler’s trademarked “Pecan Sandies,” because it was causing customer confusion.
In its defense (yes, defense!) Murray Bakery admitted Keebler’s pecan cookies were first registered as trademarks since 1956 while Murray Bakery’s cookies had only been on the market for 2 ½ years. Murray Bakery also admitted the pecan cookies themselves were similar; the cookies sold in similar places to the same type of consumers. Murray Bakery seemed to concede the two cookies seemed to be easily confused!
What was Murray Bakery thinking??
Murray Bakery argued instead that a customer would not get the two pecan cookies confused, because their names did not “sound” the same.
But both trademarks contained the word “PECAN,” a descriptive of a principal ingredient of the cookies, and both marks contained words that begin with an “s” sound and terminate in an “ees” sound, right?
Well, the Court found that the Murray Bakery did not infringe on Keebler’s trademark because of “the dissimilarity in appearance, pronunciation, and connotation of the words “SANDIES” and “SHORTEES” [in the absence of any actual customer confusion]. Murray Bakery won the case, continued to market its Pecan Shortees, and eventually sold its trademark rights to Kellogg.
As a side note, the Court did not make any finding on the “correct” pronunciation of “pecan.” So my good-natured family squabble will most likely continue as another Thanksgiving “tradition” that I am strangely thankful for.