Over the past couple of months I have assisted a few clients in dealing with trademark cease and desist letters. A cease-and-desist letter is just like it sounds, a demand by a trademark owner to another business to stop using their trademark. Often these letters are a legitimate means of protecting a legitimate brand. However, some trademark owners can go way too far with their cease and desist letters, thinking that their trademark extends much further than it really does.
The problem with some illegitimate cease and desist letters is that they are more akin to bullying than an actual legitimate concern. And such is the case of Mars Inc. v. CocoVaa. I will let the press tell some of the story.
Syovata Edari was at peace when she walked away from her career as a criminal attorney last year to open an artisanal chocolate company in a tiny East Side kitchen and showcase her handmade flavor creations.
“This is my refuge,” Edari said, standing in front of a tiny glass counter that holds her bonbons, truffles and specialty chocolate designs, such as ladies’ high-heeled shoes. “This is where I come to escape. This is my heaven.”
But that changed last week when she learned that candymaker Mars Inc., is suing her and her chocolate company, CocoVaa, in federal court for trademark infringement.
Holding the complaint in her hand, Edari said, “This is what I was trying to get away from.”
Mars is suing because it believes CocoVaa is “confusingly similar” to Mars’ CocoaVia product, a dietary and nutritional supplement, according to the complaint filed in the Eastern District of Virginia. Mars, which has its headquarters in McLean, Virginia, is seeking all of CocoVaa’s profits as well as punitive damages.
Trademark attorney Craig Fieschko, who wrote Edari’s reply to Mars’ cease-and-desist letter that preceded the complaint, called it a classic case of “trademark bullying.”
Edari, 45, is vowing to fight it, and plans to represent herself and her company. Most trademark infringement cases end up settling, but Edari wants to take the case to a jury because she believes the specifics of the case are strongly in her favor.
She also has experience as a federal public defender in Kansas and the state of Washington. “I always fought for the underdog. This is no different,” she said. “This case is absurd.”
Fieschko doesn’t think Mars has a case because the products operate in different consumer spheres.
Mars boasts that CocoaVia is the industry’s leading cocoa extract supplement. It’s sold in powder and capsule form for dietary and nutritional supplements and is sold in GNC stores and in the vitamin aisles at Walgreens.
Leaving aside the hyperbole, this does appear to be a case of trademark bullying. The Mars product does not occupy the same business space as the candy shop and there is little chance that the candy shop is going to suddenly displace Mars from the candy business.
I’m a big advocate of trademarking a company’s brand. I’m a big advocate of competition in the marketplace. I know, from experience and education, that people can be creative about how they name their business, advertise their wares, and bring their company. But just as a trademark can be a protection for company to help them build a brand, it can just as easily become a weapon to destroy a company, often a small business, rather than a shield to protect a brand.
In this case, I think Mars overreached quite a bit and probably didn’t expect to have dropped the lawsuit on a business owned by a lawyer.