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Purina Marks Its Territory

Pet food giant Purina is like a dog that won't give up its bone -- or in this case, its chow.  Three years ago, Purina sent a cease-and-desist letter to Chow, Baby!, a Baltimore area pet supply shop and Web site owned by Robin McDonald, asserting that its use of the "Chow, Baby!" name was likely to cause confusion with Purina's CHOW trademarks and would dilute the distinctive quality of those marks.  McDonald's lawyer advised her that it would cost thousands of dollars to fight for the name and that she might lose anyway.  As a result, McDonald took down the Web site.  But she retained the name, Chow, Baby! for her local store, figuring that Purina wouldn't find out about it.

Now, McDonald is ready to re-launch an Internet presence.   But this time, McDonald decided to steer clear of a dogfight with Purina, and instead, changed her company's name to "Howl, Baby," subsequently shortened to Howl.

Would it really have cost McDonald "thousands of dollars" to tussle with Purina, or was her lawyer barking up the wrong tree when he dispensed that advice?  Seems to me that the term "chow" is fairly generic.  According to the dictionary, "chow" is defined as food, a meaning that dates back to 1860.  So I don't see any paws-ability to Purina's claim.  Moreover, if McDonald had ignited an Internet campaign to e-shame Purina, as some of these recipients of cease-and-desist letters have done, I'm certain that Purina would have retreated like a dog with its tail between its legs.

Posted by Carolyn Elefant on May 2, 2008 at 12:52 PM | Permalink | Comments (1)

Comments

Whatever the expenses or outcome might be an an ideal world, or the technical legal merits, even as substantial an entity as Neiman-Marcus has decided to back down in the face of such a growling contest and possible dogfight rather than try to defend its use of "Bow Chow" for a luxury dog food, but I'd have to dig for the news article a generation ago.

A similar cease and desist letter from Kentucky Fried Chicken's lawyers defending their "Colonel Sanders" mark to a client named Sanders who realy had been in the Army using "Private Sanders Chick-A-Go-Go," years ago. Apart from discovering that a little old lady from Pasadena or somebody out there had beat them to "Chick-a-Go-Go", our arguments that this was covered by the law of parody and nobody could confuse the two was not thought worth testing in court with public financing pending.

I was involved, on appeal to the Fifth Circuit only, in Rickard v. Volkswagen, tryig to defend his use, cleared b another lawyer after a search, of the name "Bug Shop" for an indepnedent garage emphasizing working on VW Beetles." Despite a recent Texas case involving another independent selling another brand of foreign cars where nobody raised this against the name "Bugs Imports, Inc.," we lost the appeal, but there were other factors that had ccontributed significantly to the loss at the trial court.
The Court of Appeals focused on an unregistered comon-law trademark because VW had, in fact, decided earlier that "Ifyou can't lick 'em, join 'em," and run an ad or two using the term "bug" itself."

Posted by: Peter S. Chamberlain | May 4, 2008 5:11:12 AM

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