Who Owns "How"? Yogurt, Virtue, and Trademarks
Author Dov Seidman is suing a manufacturer of Greek-style yogurt over the use of the word "How."
As reported in the New York Times, Seidman is the author of How: Why How We Do Anything Means Everything. The book is about business culture and ethics and includes a forward by former President Bill Clinton.
Seidman, who Fortune Magazine called the "hottest advisor on the corporate virtue circuit," uses the phrase "How Matters" in some of his works.
Chobani, a yogurt company founded in 2005 by a Turkish immigrant to the United States, has also launched an advertising campaign based on the word "how."
The yogurt ads focus on "how" the yogurt is made, including a straining process to make it especially dense. The ads also use the phrase "How Matters."
Seidman has five registered trademarks for the word mark "How." The goods and services covered by the mark include "case studies, white papers, articles, newsletters, and handbooks in the fields of law, ethics, business communications, business and professional conduct."
Seidman also uses the "How" mark on promotional items such as t-shirts, bags, and bookmarks, publishes "The How Report," and has a "How" Facebook page.
However, Seidman has no registered trademark for the use of "How" in connection with yogurt or other foods.
Seidman and his company, LRN, sued Chobani in a New York federal court for trademark and service mark infringement and unfair competition under the federal Lanham Act.
A Smoking Tweet?
Seidman claims in his complaint that Chobani and its advertising firm were fully aware of Seidman's "How" marks before launching the allegedly infringing ad campaign.
In late 2013, the advertising agency allegedly discussed Seidman's trademarks and message during a meeting. In January 2014, Chobani sent a Tweet to Seidman saying: "Thanks for inspiring the world to care about "how." Can you help inspire the food industry?"
The day after this Tweet was sent, Chobani launched its new branding platform, which included the prominent use of "How."
According to the Times, Chobani and its advertising agency later denied they had ever heard of Seidman when they launched the ad campaign. They have asked the US Patent and Trademark Office to cancel Seidman's "How" trademark, saying that it's too broad.
Seidman claims that Chobani uses the word "How" in the same way he does in his book: "as a noun connoting responsible and ethical corporate behaviors."
Seidman cites a letter from Chobani's counsel, from May 2014, in which she says Chobani's "How" campaign focuses on Chobani's socially and environmentally responsible practices, in the hope of appealing to consumers and inspiring other food manufacturers to improve their practices.
Chobani's "How" ads were aired during the 2014 Super Bowl, Winter Olympics, and Academy Awards.
Chobani also uses the hashtag "#howmatters" in its promotions.
Before filing his lawsuit, and based on his belief that "companies that espouse ethical behavior and transparency should attempt to resolve disputes through meeting with each other," Seidman claims that he tried to meet with Chobani at least six times, but that Chobani rebuffed his overtures.
Seidman's suit claims that Chobani's ad campaign will cause consumers to improperly believe that he and his company are associated or affiliated with Chobani, or that he licensed, sponsored, or supported Chobani's products and business practices.
This is what's called "reverse confusion" in trademark law. Whereas most trademark cases relate to counterfeiting (for example, the use of the trademark "Prada" on a counterfeit handbag), reverse confusion occurs when a second user of a mark is said to "cash in" on a senior user's reputation and goodwill by using the mark on a genuine but unrelated product or service.
If you have questions about trademark use, and before seeking to register a trademark, it's advisable to consult a trademark attorney.