The ongoing legal battle between yogurt maker Chobani and author Dov Seidman got another nudge recently when Chobani asked a judge to cancel Seidman's trademark for the word "How." Chobani is also applying to trademark the phrase "How Matters," the New York Times reported on Saturday. 

Seidman, an author of books that make extensive use of the word "how" in their titles--for example: How: Why How We Do Anything Means Everything--sued Chobani this summer for an ad campaign it launched prior to the Super Bowl, entitled "How Matters," about how its Yogurt is made, as well as a Tweet Chobani sent out in March that basically acknowledged its awareness of Seidman's use of the concept.  

Chobani has been on the Inc. 500 list of fastest-growing U.S. companies, and Seidman has contributed to Inc. So we're sad whenever members of our community wind up in court. Nevertheless, there are lessons aplenty for small businesses in the legal dustup.

As a number of high-profle cases have shown in recent months, whether it's the Redskins use of an offensive term or Candy Crush's claiming of the word "candy," trademarks matter. And you probably want to avoid the hassle of litigation when introducing phrases and slogans related to your business.

So I reached out to legal experts Marsha Gentner, senior counsel and a trademark attorney at Dykema, a law firm in Washington, D.C., and to attorney Paul Llewellyn, co-head of the trademark, copyright and false advertising group at law firm Kaye Scholer to get some advice.   

Here's what they had to say:

  • Go the Google and Kodak route. When choosing a business name, make something up and trademark it. It'll be harder for someone to copy.
  • Avoid marks and phrases for which someone has already gotten a trademark or garnered publicity. Chobani's Tweet tipped its hand to the knoweldge that Seidman got there first. If Seidman didn't take action, "it would be the same thing as losing," Gentner says.
  • Before you adopt your trademark, or any slogans and phrases pertaining to it, have an attorney order and review a trademark clearance. That will help you identify pre-existing rights that could lead to a dispute. That includes both federal and common law uses of marks and phrases, as well as any pending applications, says Llewellyn. 
  • Register your marks and phrases and apply for federal trademark protection. Seidman has two federal trademarks for "How", which should give him a pretty strong case. Seidman also has five pending applications for related trademarks, Gentner says.

There's one other thing to keep in mind, and that's something called "fair use." Under patent and trademark law, Chobani might not be guilty of infringement if it had used "How Matters" merely as a description, and in good faith. But its snarky March Tweet, as well as its own trademark application, pretty much rules that out. 

"Fair use and [applying for] an exclusive trademark are diametrically opposed," Gentner says. 





Published on: Oct 6, 2014