Friday, September 12, 2008

Frozen Yogurt Chain Pinkberry Goes After Fro-Yo Competitor Yogiberry

The Maryland Daily Record had an article the other day (link here) on the trademark infringement lawsuit filed in the U.S. District Court of the District of Maryland by Pinkberry, Inc., the company behind the Los Angeles based frozen yogurt chain, against Yogiberry, Inc., a frozen yogurt company with one store located in Olney, Maryland (and another shop set to open and a third in the planning stages). See Pinkberry, Inc. v. Yogiberry, Inc., Case No. 08-cv-02355 (D. Md. September 09, 2008). The Maryland Intellectual Property Law Blog also writes about the complaint (link here).

Pinkberry holds three federal registration for the mark PINKBERRY (both the word mark and a design mark (pictured above) for restaurant services as well as for the PINKBERRY word mark for frozen yogurt and smoothies) along with several other pending applications for the word PINKBERRY.

Yogiberry has its own federal registration for the design mark YOGIBERRY for retail frozen yogurt store, which issued on September 9, 2008 (the same day Pinkberry filed its lawsuit). Yogiberry also has an application pending for the word mark YOGIBERRY – published for opposition on September 2, 2008.

Pinkberry’s attorneys apparently contacted Yogiberry with a cease and desist letter in May of this year objecting to Yogiberry’s name (and likely its then pending applications for the mark YOGIBERRY) as well as its interior décor. Pinkberry claimed that Yogiberry’s name infringes its PINKBERRY marks and that Yogiberry infringes Pinkberry’s trade dress by intentionally copying Pinkberry’s pastel color scheme and modern furniture (because whenever you think of a frozen yogurt shop with pastel colors and modern furniture, you think of Pinkberry, right?).

After Yogiberry’s own counsel contacted Pinkberry’s attorneys about the necessary changes Yogiberry had to make to comply with Pinkberry’s demands, Yogiberry’s owner, My Huynh, changed the interior décor (repainting orange walls black, repainting yellow and white benches green and white, removing the menu from the wall and putting a TV in its place), but apparently not the name.

Why Pinkberry opted not to file an opposition against Yogiberry’s now registered trademark application back in June is a mystery? But rather than file an opposition against Yogiberry’s other pending application and a cancellation petition against Yogiberry’s issued trademark registration, Pinkberry has opted to go to court where it can seek injunctive relief against Yogiberry’s to stop its use of the Yogiberry name altogether.

This isn’t the first time Pinkberry has taken action to stop competiting frozen yogurt chains from using a “-berry” name. In 2006, Pinkberry sued a frozen yogurt shop named Kiwiberri for trademark infringement and apparently won (there is nothing to be found on and according to a report here Kiwiberri changed its name to Kiwibear earlier this year).

Of course, Pinkberry has had its own interesting legal issues, most notably the lawsuit (now settled) where a customer (who supposedly had ties to a competiting frozen yogurt chain) sued Pinkberry for misleading customers into thinking that its “dessert” was yogurt because in fact the ingredients in its “frozen yogurt” did not meet the California Department of Food and Agriculture regulations required in order for a store to label its product “frozen yogurt.” (see LA Times article here on the “Nogurt” controversy; see also related blog post here and here on the outcome).

One wonders if Yogiberry's case would be any stronger if the chain were endorsed by Yogi Berra. Of course, if asked about the outcome of this lawsuit, Yogi would probably say "It's tough making predictions, especially about the future."
[Update: The Los Angeles IP Trademark Attorney Blog has a writeup here on several lawsuits filed by Pinkberry in the Los Angeles area. ]

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