Friday, November 2, 2007

BeeCeuticals files trademark infringement lawsuit against DreamWorks and Paramount over use of "Give Bees a Chance" in Jerry Seinfeld's "Bee Movie"

On November 1, 2007, BeeCeuticals LLC (“BeeCeuticals”) filed a trademark infringement lawsuit against DreamWorks Animation SKG Inc. (“Dreamworks”) and Paramount Pictures Corporation ("Paramount") in the U.S. District Court for the Southern District of Florida. See Beeceuticals LLC v. Dreamworks Animation SKG, Inc. et al, Case No. 0:2007cv61563 (S.D. Fla.). Bloomberg and L.A. Times ran articles on the lawsuit.
Fans of Howard Stern’s radio show on Sirius Satellite Radio will recognize the BeeCeuticals name because the company’s owner, Richie Gerber, is Howard Stern’s cousin and promotes the company’s honey-based organize products on Stern’s show.

At issue in the lawsuit is the use of the slogan “Give Bees A Chance” in advertisements for the new Jerry Seinfeld animated movie “Bee Movie” which was produced by DreamWorks and is being distributed by Paramount (the movie opened today in theaters nationwide). On October 16, 2006, BeeCeuticals filed a Section 1(a) use-in-commerce trademark application with the U.S. Patent and Trademark Office for the mark GIVE BEES A CHANCE for four classes of goods and services: 1) advertising, marketing and promotion services; 2) Cosmetics and skin care products; 3) Information in the field of bees and bee facts concerning the environment and well-"bee"ing (this is exactly the way it appears in the application), and 4) honey and bee pollen for food purposes.

According to the complaint, BeeCeuticals has been using the mark to advertise the company’s honey and skin-care products over 400 times on Stern’s show beginning in March. Representatives from Paramount and DreamWorks allegedly met with a marketing representative from BeeCeuticals last month to explore some joint marketing ideas. Soonafter, without permission from BeeCeuticals, Paramount and DreamWorks went on to begin using the phrase “Give Bees A Chance” to promote “Bee Movie.” BeeCeuticals fired off a cease-and-desist letter to the Paramount and DreamWorks on Oct. 24. While Paramount and DreamWorks indicated they would “retire” television ads using the slogan, neither would guarantee to never use the slogan again in any future marketing campaigns.

One interesting sidenote with respect to the prosecution of the GIVE BEES A CHANCE application, an office action was mailed on March 1, 2007, rejecting the “Advertising, marketing and promotion services” for failure to function as a mark since such services, as reflected on the specimens of use, were only performed in connection with the advertising or promotion of the BeeCeuticals’ own products and not providing such services on behalf of others. However, for reasons not quite apparent, BeeCeuticals failed to file a timely response by the September 1, 2007, and had to file a petition to revive the application, which was granted October 15, 2007. BeeCeuticals appears to have dropped advertising, marketing and promotion services from its application, so it should be published for opposition in due course. Nonetheless, one wonders whether the use of the slogan by Paramount and DreamWorks is what prompted BeeCeuticals to revive its abandoned application.

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