If you have kids (or act like a kid), you may have purchased a product manufactured by the French company Yoplait called “Go-Gurt.” In short, Go-Gurt is squeezable yogurt packaged in soft tubes that are perfect for people who never learned how to use a spoon. Go-Gurt is primarily marketed to children and come in a variety of different sugary-sweet flavors. One particular benefit of Go-Gurt is that it can be frozen the night before school, thrown into a lunchbox in the morning, and it will be thawed by lunchtime. Although I’ve never tried the product, it is my understanding that it’s quite popular among younger kids who probably wouldn’t touch it if it was put in a bowl and served with an eating utensil.
Yoplait is the owner of a 2001 federal trademark registration for GO-GURT, as well as three other registrations for marks that incorporate the term GO-GURT, including YOPLAIT GO-GURT PORTABLE YOGURT (Reg. No. 2479618), GO-GURT SIMPLE (Reg. No. 3780528), and SIMPLY…GOGURT (Reg. No. 3845231). What I happen to find particularly interesting is that the identification of goods in Yoplait’s registration for YOPLAIT GO-GURT PORTABLE YOGURT is limited specifically to “yogurts,” while the other three registrations list the products as “dairy products excluding ice cream, ice milk, and frozen yogurt.” This would seem to be an unreasonably misleading identification of goods considering that it technically encompasses such foods as cheese, sour cream, milk, buttermilk, cream cheese, cottage cheese, whipped cream, and dozens of other types of dairy products of which GO-GURT is not. Although broad identifications are usually desirable for owners of trademark registrations, if they cover products and services for which the mark is not actually being used in commerce, then the registrations may be subject to cancellation on the basis of fraud on the Trademark Office. Oftentimes, the threat of cancellation can be used as leverage by the defendant in a trademark infringement suit or trademark opposition proceeding when the owner of a registration asserts it against the defendant’s use or attempted registration of its own trademark.
Now, this brings us to a trademark application filed in June 2009 by an individual named Mona Eldib for the mark GOA-GURT for “frozen yogurt; frozen yogurt mixes; frozen yogurt confections.” Quite surprisingly, the Trademark Office did not cite any of Yoplait’s GO-GURT registrations as a basis for refusing registration of Ms. Eldib’s mark. I mean, wouldn’t you agree that Ms. Eldib’s mark is nearly identical in appearance and sound to those owned by Yoplait? Don’t you also think that frozen yogurt is at least somewhat related to the dairy products listed in Yoplait’s registrations (even though three out of the four registrations specifically exclude frozen yogurt)? I certainly do, especially considering that Yoplait’s registration for YOPLAIT GO-GURT PORTABLE YOGURT is for yogurts. Let’s put it this way, if I was the trademark examining attorney assigned to review Ms. Eldib’s application, I would have considered it to be confusingly similar to all four of Yoplait’s registered marks and would have rejected it. But perhaps I’m just an ornery trademark attorney who enjoys a good fight once in a while.
Anyway, Yoplait apparently has a different opinion than the Trademark Office and recently filed an opposition against Ms. Eldib’s application for GOA-GURT on the basis of priority and likelihood of confusion. This is where I believe Yoplait’s arguably false identifications of goods could come to bite it in the old derrière. Of course, you and I may differ on whether Yoplait would be successful in obtaining a favorable judgment from the Trademark Trial and Appeal Board, but it is indisputable that Yoplait has the time, money, and resources to pursue this opposition all the way to the bitter end if it so desires. So, if I were Ms. Eldib, I would put some pressure on Yoplait to settle this opposition by playing a little offense and filing a cancellation proceeding against three of Yoplait’s registrations. I’m not saying the cancellation proceeding would necessarily be successful, but, let’s face it, Yoplait has significantly more to lose by having its registrations canceled than Ms. Eldib has to lose in the opposition against her intent-to-use application for GOA-GURT. It could be the leverage Ms. Eldib needs to bring the opposition to an amicable resolution.
The point of this story is to demonstrate how overly-broad and unclear identifications of products and services can seriously jeopardize trademark registrations or, at the very least, unnecessarily leave them vulnerable to challenge by a guy who is hyped up on the large amount of sugar in a Yoplait Go-Gurt and is ready to go Rambo on some company that he perceives as unfairly challenging his use or attempted registration of his beloved trademark. So, avoid these types of identifications and life will be sweet (but probably not as sweet as a Go-Gurt).