Expanding markets and product line puts company "Over a Barrel"

Expanding markets and product line allegedly puts company "Over a Barrel"

 

 Update- The U.S. Court of Appeals for the Seventh Circuit upheld the  preliminary injunction barring use of the mark Cracker Barrel Old Country Store for use in connection with ham products to be sold in supermarkets





 

Original Post:

 

A district court judge has granted Kraft Food's request for a preliminary injunction against Cracker Barrel Old Country Store restaurant chain from selling its branded meats in grocery stores.  Kraft's request is based on its claim that there would be costumer confusion between its Cracker Barrel ® brand cheese and Cracker Barrel's meats.  For now, the expansion of Cracker Barrel Old Country Store meats into grocery stores has it "over a barrel."

Kraft federally registered its mark, CRACKER BARREL for cheese in 1957.  Twelve years later in 1969, Cracker Barrel Old Country Store started using its name/mark for restaurants and has subsequently obtained federal trademark registrations for its mark for restaurants and various food items.  For almost half a half century, these two companys' marks lived in harmony with each other, one for grocery store sold cheese and the other for restaurants.  What changed?  Cracker Barrel Old Country Store decided to expand its business from resturants to offering its meats in grocery stores.  Even though the food products are different (meat for Cracker Barrel Old Town Country Stores and cheese for Cracker Barrel ® Brand Cheese), the district court judge, in granting the prelimianry injunction at least found it plauable or likely that Kraft will prevail and that consumers will be confused between the two marks.

Lessons to be learned

What is the take home lesson?  If you have a mark (e.g. name) similar to another's, even if your products are different (cheese vs. meat), you may not be able to use your mark in new markets or for new products or services, if the other user has been using the mark longer and/or the other user has superior rights (e.g. a mark with strong consumer recognition (think McDonald's and now Kraft's Cracker Barrel)).  And, of course, choose your mark wisely and do your due diligence to discern whether there are other users of your proposed mark/name before you start using it.

© Stephen J. Weyer 2013

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