914-908-6757 anthony@vernalaw.com
Candy maker Mars Inc. is suing a Wisconsin woman over chocolates she is selling under a name that the company argues is “confusingly similar” to its cocoa extract supplements called CocoaVia.

Mars said in a federal lawsuit filed March 24 that the chocolates sold in Madison by Syovata Edari will likely “confuse and deceive consumers” because they’re branded as CocoVaa. The company contends the similarity in the brand names hurts Mars’ reputation and Edari should be barred from using CocoVaa on her products.

Edari said that the lawsuit is “trademark bullying” and noted her chocolates are distinctly different than the product in question that Mars sells. Mars markets the cocoa extracts in CocoaVia as promoting “healthy blood flow from head to toe,” according to the lawsuit.

Let’s take a look at some salient facts.

Mars sells products under COCOAVIA.  Edari sells products under COCOVAA.

There are multiple trademark claims in the complaint (copy found here: https://consumermediallc.files.wordpress.com/2017/04/show_multidocs.pdf).  These include trademark infringement under the Lanham Act, false designation of origin, common law trademark infringement.  Mars also asks the federal district court to cancel the registration of the COCOVAA trademark in the United States Patent and Trademark Office.

One preliminary item I would like to point out. A news report states that “When Edari scanned Google for similar names….” Hold that thought.  The defendant only scanned Google?  Did the defendant do a full trademark search?  Did the defendant at least look at the USPTO website (which is only a bare minimum if it meets any minimum at all)?  There are plenty of posts about the importance of a trademark search, so there’s no need to discuss this further.  But let this be a warning to you that if you do not do a trademark search before using a mark on goods or in conjunction with services, then you will not understand what plantiffs may be waiting to file a suit once that mark is in use.

Looking at this from a standpoint of infringement and a likelihood of confusion between the parties and their marks, there are some issues for the defense:

1) Trademarks themselves:  COCOAVIA vs. COCOVAA

The problem here is that there is only one letter that’s different between the marks.  Both marks begin with the word “cocoa” or “coco,” which is a form of “cococa”.  When we examine the goods more, we’ll see that “cocoa” is descriptive and that weak dominant portion of the mark is going to hurt.

While the secondary portion of the mark has the one-letter difference, which results in an extra syllable, there still does not appear to be much of a difference between the marks. 

There is no surprise that the defense would point to a nickname, “Vaa,” that her father used to call her.  This does differentiate the meanings between “via” and the nonsensical “vaa.” 

Once again, if this were a part of the dominant portion of the mark or if there were a dominant portion that was not descriptive of the goods/services, there would be more relevance to this argument.  Unfortunately, it is buried in the mark, showing little differences between the mark.

Does pronunciation matter? Regardless of any rules of phonetics, it is well established that there is no such thing as a correct pronunciation of a trademark. See: The American Products Company v. F. A. Leonard, 11 USPQ 184 (CCPA, 1931); Cooper’s, Incorporated v. Rocky Mountain Textile, Inc., 123 USPQ 423 (DC Colo., 1959) ; Ex parte Van Pelt & Brown, Inc., 77 USPQ 130 (Comr., 1948); and Nehi Corporation v. Victor Syrup Corporation, 95 USPQ 341 (Comr., 1952). This rule is especially true where, the marks of the parties both consist of coined and/or unusual terms, and while the pronunciations thereof may vary with the individual, it is quite evident that the first several letters of the respective marks could readily be pronounced in an identical manner.

Again, context matters.  In many instances some products are purchased by discriminating consumers who might be able to make minute distinctions between similar marks.  Will the record in this case reveal that one party sells its products in many different stores across the nation and, therefore, is no reason to believe that any consumers, as a class, would be discriminating purchasers of these products?  

2) Economic relationship of the goods the parties create.

Mars’ COCOAVIA is registered as No. 4,179,465 representing “dietary and nutritional supplements, powdered nutritional supplement drink mix, powdered dietary supplement drink mix, and nutritionally fortified beverage mix, all made in significant part of cocoa.”  Despite use starting in 2003, Mars’ registration was finalized on July 24, 2012.

COCOVAA registered as No. 5,160,782 about 5 years later for “Candy; Caramels; Chocolate candies; Chocolate fondue; Chocolate mousse; Toffee; Brittle; Chocolate confections, namely, bonbons, bars, barks, chocolate covered nuts, chocolate covered coffee beans, drinking chocolate; Confectioneries, namely, snack foods, namely, chocolate; Filled chocolate.”

At first blush, these goods do seem different.  One is nutritional supplements and the other is straight candy.  However, how economically related are these goods?  The defense is going to have a big hurdle here.

Mars, Inc., the plaintiff, is a seller of many candies.  M&Ms, Mars, Milky Way, etc.  And if a multinational product can find health products in cocoa, why wouldn’t that company sell those products? 

I think the defense is going to have an issue in this case, trying to differentiate itself from the plaintiff.  I just do not know if I see the gigantic differences that would be needed to overcome this kind of claim.