By Tamlin H. Bason
Finding the registered “Yummi Bears” mark for children's vitamins weak, and that mark and the “Yummy Gummy” mark dissimilar, the U.S. District Court for the Central District of California on Aug. 16 ruled against Yummi Bears' manufacturer in a trademark infringement lawsuit (Hero Nutritionals LLC v. Nutraceutical Corp., C.D. Cal., No. 8:11-cv-01195-AG-MLG, 8/16/13).
The first word in the plaintiff's Yummi Bear mark “is descriptive of the good-tasting nature of the product,” the court held, finding the mark conceptually weak. Moreover, in addition to the two parties in suit, numerous third parties sell children's vitamins in gummy bear form. Accordingly, the defendant's use of its house mark in selling its Yummy Gummy products makes the marks dissimilar, and thus there is no likelihood of confusion, the court ruled.
In 2009, Nutraceutical Corp. began selling a gummy version of its Kal Dinosaur line of children's vitamins. The Kal Dinosaur line includes such branded products as Vitamin C-Rex and Multi-Saurus. The packaging for those vitamins includes the term “Yummy Gummy,” which appears below the name of the vitamin.
Hero sued Nutraceutical for trademark infringement alleging that its Kal Dinosaur line of vitamins would cause confusion with Hero's Yummi Gummy vitamins.
The first factor, which assesses the strength of the plaintiff's mark, weighs against a finding of infringement, Judge Andrew J. Guilford said. The Yummi Bears are commercially successful, but the marks “are conceptually weak, as it takes little to no imagination to understand the significance of the reference,” the court said. In addition, the numerous third party uses of similar marks makes the Yummi marks weak and entitled to limited protection, the court concluded.
The court agreed with Hero that the second factor, which assessed the proximity of the goods, weighed in favor of finding a likelihood of confusion.
Additionally, the two terms are both only used in connection with “their respective HERO and KAL house logos, which are not similar and serve to further distinguish the marks and products, making confusion even less likely,” the court said. The court concluded:
[W]hile the words “yummy” and “yummi,” standing alone, are similar in sight, sound, and meaning, the dissimilarities in the designs, themes, layouts, and respective house marks between the two product labels renders the marks dissimilar and easily distinguishable.
The remaining factors also weighed against a finding of confusion, the court concluded. In so finding, the court was critical of Hero's failure to proffer any reliable evidence of actual consumer confusion given that the marks had been used concurrently for more than three years. The court thus found in favor of Nutraceutical.
Hero was represented by Jeffrey K. Joyner of Greenberg Traurig, Los Angeles. Neutraceutical was represented by Richard T. Jackson of Holland and Hart, Salt Lake City.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)