By Bryan K. Wheelock, Principal
On February 6, 2019, Eat’n Park Hospitality Group, Inc. sued Eleni’s NYC, Inc., in the Western District of Pennsylvania for infringing Eat’n Park’s registered smiley face trademark.
Eleni had previously licensed the smiley face from Eat’n Park, and the cookies on its website carry the registered design seen in the photo below.
According to Wikipedia and the Smithsonian Institution, the smiley face was created in 1963 by graphic artist Harvey Ross Ball as a morale booster for the employees of State Mutual Life Assurance Company of Worcester, Massachusetts. The smiley, with a bright yellow background, dark oval eyes, full smile, and creases at the sides of the mouth, was imprinted on more than fifty million buttons and became familiar around the world.
While Eleni’s cookies appear to bear the registered mark, the question is whether consumers are likely to be confused. Eat’n Park has a federal trademark registration — several in fact — but they still have to prove a likelihood of confusion. Even though Eleni’s cookies use that design, the answer may not be so clear.
Considering the ubiquity of the smiley as a decoration, and the fact that many cookies are decorated, would consumers perceive the smiley as trademark identifying the source or will they simply think it is a pretty cookie?
Given the popularity of the smiley, one would expect that Eat’n Park’s mark is very valuable, but, like all trademark owners, Eat’n Park needs to make sure that its mark is perceived as a mark and not merely a decoration.
For this reason, it is good idea for trademark owners to advertise their trademarks in addition to advertising their trademarked products.