LOS ANGELES — Pom Wonderful, the makers of pomegranate products, may encounter serious difficulties proving trademark infringement by a smaller competitor, according to one attorney in the field.
According to a previous report by the Northern California Record, the company sued Bai Brands in a California federal court, claiming the defendant infringed the plaintiff’s Super Tea trademark. Bai markets products with the one word SuperTea on the label.
But there are a number of hurdles Pom will face to win the case, including that the company failed to file an opposition when Bai was applying for the mark with the U.S. Patent and Trademark Office, attorney David Schwartz, of the Los Angeles law firm Raines Feldman, told the Northern California Record.
“This may be difficult for Pom, but the company may have additional reasons for filing the suit,” said Schwartz, an attorney with experience in trademarks who made a brief study of the filings with the patent office related to the case.
Large companies monitor filings at the trademark and patent office on a daily basis, and should be ready to oppose the granting of the right to use a mark. In this case, Pom did not do so.
Schwartz identified other reasons why Bai could have a strong defense case, including that the mark the company registered includes its own brand name. It is patented “Bai Antioxidant Supertea.”
Pom Wonderful LLC and The Wonderful Co. LLC, headquartered in Los Angeles, filed the complaint on Jan. 27 in the U.S. District Court for the Central District of California.
Bai was told to stop using the mark, but did not do so, according to the complaint.
The defendants are New Jersey-based. The company was taken over by soft drinks giant Dr, Pepper Snapple in a $1.7 billion deal that was announced as completed Feb. 1, NJ Biz reported. According to the complaint, the plaintiffs allege that they suffered damages to their business and reputation from having their mark used on other competing products.
But proving that Bai’s SuperTea impacted sales is also going to be a difficult hurdle, Schwartz said, adding there are other more arcane reasons that might help the defense, including that Pom may not have securely patented the use of the adjective “super” alongside its brand.
Schwartz speculated there could be other reasons for filing suit, including an economic argument, that any publicity surrounding a legal case may, conversely, attract Bai customers to Pom products.
“Maybe in order to gain publicity for its own drinks,” Schwartz said, though cautioned that he is not a trial attorney working on such potential strategies.
Some larger companies also file trademark suits to muscle out smaller opposition, Schwartz said. In this case, with Bai in the embrace of Dr. Pepper, that is less likely to happen.
Pom has sold its Super Tea brand for many years. But the registration of the two-word mark was on a supplemental register — where protections are not as strong — since 1999, according to filings with the USPTO.
The company applied to add the two-name mark on to the principal register last May. That has not yet passed the opposition stage.
Bai filed and was later granted its mark in 2015.