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.