Trademark Attorney Morris Turek

Morris E. Turek

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Has POPSICLE Become Generic for Frozen Confections on a Stick?

Popsicle Trademark

This week’s blog post will remind you of those summer days you spent as a kid rotting your teeth and showing your friends your purple tongue.  If you don’t know what I’m talking about, here’s a link to Popsicle, your favorite childhood dinner-spoiler and shirt-stainer.

Unilever Supply Chain, Inc. is the owner of a family of marks that all end in “SICLE,” including POPSICLE, FUDGSICLE, CREAMSICLE, and CHOCSICLE.  These marks are all used in connection with frozen confections and Unilever owns federal trademark registrations for each one of them (Registration Nos. 2421400, 0434594, 1839541, and 3178063).  I also note that POPSICLE, FUDGSICLE, and CREAMSICLE have been in use since prior to 1950 and that the registrations for these marks are incontestable (meaning they are only subject to challenge under very limited circumstances).  I think we can all agree that Unilever’s marks are very well-known among the general public, perhaps to the point of being “famous” and deserving of the broad trademark dilution protection afforded such marks.

Without question, Unilever has been quite aggressive in pursuing perceived infringements of its “SICLE” family of marks.  Over the years, it has filed oppositions against third-party trademark applications for ORANSICLE, MOMSICLE, SMARTSICLE, PUPSICLES, CORNSICLES, SCENTSICLES, WHIMSICLE, TROPSICLE, RINGSICLE, FRUITSICLE, and BLASTSICLE, among others.  Not a single one of these applications have matured into a registration.

Well, on September 6, 2010, an individual named John Caglia decided he would get into the game and filed a trademark application seeking registration of the mark GLOWSICLE for “frozen confections, namely, freezer pops.”  Around the same time, Mr. Caglia purchased the domain <glowsicle.com> and set up a Facebook page which advertises the products as “glowing popsicles.”  The trademark application was filed on an intent-to-use basis and I can’t quite figure out whether the GLOWSICLE products are available for purchase yet.  But, I’m sure when they do hit the streets, kids will be clamoring for them.  “But, mom, they glow!!”  I tell you what, I would conduct a thorough investigation into what makes these things glow before letting my child inhale them.  I mean, is it like chowing a frozen glow stick?

Anyway, about three months after Mr. Caglia filed his trademark application, Unilever filed a lawsuit against him in the United States District Court for the Central District of California alleging claims of trademark infringement, trademark dilution, unfair competition, and trademark counterfeiting stemming from Caglia’s use (or intended use) of the GLOWSICLE trademark.  I’m not sure if Caglia has filed his answer to the lawsuit yet, but he will have to soon in order to avoid a default judgment being entered against him.  Having said that, I have little doubt Caglia will be promptly responding to the lawsuit considering that he recently retaliated against Unilever by filing a cancellation proceeding against its registration for POPSICLE.  In the Petition for Cancellation, Caglia alleges that “popsicle” is a “term that has been widely used by frozen confectioners, retailers, the media and the public to refer to flavored frozen confections that come on a stick” and that “popsicle” has “become generic in that the primary significance of the term to the relevant public is flavored frozen confections that come on a stick.”

So, what do you think?  Does POPSICLE still function as a trademark for Unilever’s frozen confections, or has it gone the way of “aspirin” and “linoleum” and become generic for frozen confections on a stick?  What about the fact that Unilever owns other “SICLE” marks that have been in use for six decades?  Does that makes a difference in the analysis?  I personally believe the question of whether POPSICLE has become generic is a close call and will likely depend on expert testimony and consumer survey evidence.  But, the burden of proof is with Mr. Gaglia so he better be ready to spend tens of thousands of dollars proving his case.  And he probably should retain a trademark attorney since it appears from the cancellation that he is currently unrepresented.

Maybe I should take Gaglia’s case in return for a lifetime supply of Glowsicles?  Well, assuming they aren’t radioactive that is.

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6 Responses to Has POPSICLE Become Generic for Frozen Confections on a Stick?

  1. Dan Ballard says:

    Hmm. I had no idea the various “sicle” ice cream products were protected by federal registrations.

    As for establishing whether Popsicle is generic it’s useful to remember that a mark only becomes generic if competitors, and other marketplace participants, use the mark to denote the product genus. Even if consumers think POPSICLE refers to any ole “Popsicle” if Unilever is the only one that actually sells POPSICLES [because its stopped others from doing so] then POPSICLE is not generic. In short, consumers may think there’s lots of Popsicle providers but if there ain’t then Unilever’s mark still retains its source identifying function.

  2. Annette Heller says:

    I believe Popsicle is still a trademark since other competitors have not found a need to refer to their products as Popsicle. But it will be interesting to see what happens to this lawsuit and cancellation petition.

  3. John Caglia says:

    Under the rules of the trademark office a trademark becomes generic if it no longer serves to identify were a class of goods our services comes from. Popsicle has become the common name for Ice Pop, Freezer Pop etc, ask any kid in North America if they want a popsicle and give them something other than something made by Unilever and you’ll never hear, “hey mom this isnt a popsicle.”
    Unlivers claim of “sicle” marks is weak at best. They had a trademark in 2005 for “sicle” and they let it expire. Also Fudgesicle and Creamsicle are blended words made using the generic term popsicle. There are other reg trademarks not owned by Unilever with “sicle” in the trademark. As to enforcement of the trademark that other people have cancel or dropped, I have talked to quite a few of them and they all said they didnt have the money to fight them. And at last a qoute from one of my daugthers favorite singers ” Sun kissed skin so hot will melt your popsicle” Katty Perry.

    John Caglia

  4. DB says:

    I couldn’t resist this one. It appears that “popsicle sticks” is concededly generic. If a company were to sell “Ice Pops On Popsicle Sticks” would that be permissible?

  5. Mela says:

    If John were to lose his first name because it is used too commonly and his name were changed to Bob BECAUSE of the generic use of a name that is also in reference to a toilet I’m pretty sure he would try to fight against it to keep his first name intact. I think if a name is trademarked, it should stay trademarked. None of this stealing of a name just because it’s used widely. Who cares?? Let people use the name, it doesn’t matter, but taking an invention’s name and ripping it away from the inventor is selfish and rude. This John Caglia needs to be renamed Bob until he drops his animosity and quits starting fights with companies just to be an insufferable a-hole.

  6. John Caglia says:

    I think Mela doesnt like trademark law. She also must not have any kids. Let me make this point there is no trademark for car,airplane,tv,computer,etc these were all inventions, popsicle is the same.

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