November 19, 2018
Originally posted 2017-02-27 12:09:42
By Anna Chaykina | www.amdlawgroup.com
It “keeps going and going and going…” said Energizer’s famous commercial introducing its pinky rabbit trademark as early as in 1989.
Being the owner of Energizer Bunny Trademark initially registered with United States Patent and Trademark Office (“USPTO”) since January 7, 1997, Energizer continues its fight for the pink rabbit after more than 20 years of continuous use.
Back to the memories
Energizer Brands, LLC (“Energizer”) has been using its trademark (picture of a pink rabbit in sunglasses and with a drum) as of 1989. During the same year, the application for registration of the trademark was filed with USPTO. A year later, Duracell U.S. Operations, Inc. (“Duracell”) filed an application for its pink bunny trademark with USPTO as well.
It comes without saying that that trademark bunnies of Energizer and Duracell are rather visibly similar (please see picture above). Considering that the parties reached the agreement, allegedly limiting Duracell’s use of the bunny trademark in the US.
In 1997, the Energizer’s trademark was duly registered by USPTO for “batteries”. The popularity of the bunny even in 2016 talks for itself, the years of advertising and marketing activities paid off and Energizer has developed simple bunny into one of the most famous trademarks not only in the US but worldwide.
What does plaintiff say
After almost 20 years of the agreement date, on February 19, 2016 Energizer filed the claim against Duracell (as well as Procter & Gamble Company and Gillette Company) alleging that notwithstanding the agreement and Energizer’s federal registration of the trademark, Duracell uses its bunny in “unlawful packaging” of products being sold in the US. It comes without saying that the packaging in question contains the picture of that exact Duracell bunny.
Quoting the lawsuit, the “public is likely mistakenly to believe Duracell’s products originate from or are affiliated, connected, or associated with Energizer or the Energizer Bunny Trademark,”.
Energizer seeks a permanent injunction against Duracell’s use of the bunny and “any other designation confusingly similar to the Energizer Bunny Trademark or likely to dilute the distinctiveness of the Energizer Bunny Trademark” as well as monetary damages resulting from Duracell’s activities and punitive damages.
What can defendant say
For the moment, there is no publicly available information referring to Duracell’s and other defendants’ reaction to the suit. It is also hard to foresee legal reasoning the defendant may provide as the terms and conditions of the agreement are confidential.
However, if there is an actual dispute and no settlement is reached further, we may see another fight for famous bunnies as well as an interesting piece of court practice elucidating new levels of similarity that different trademarks may have or reconfirming the current practices.
Well, hopefully, we will see which way the bunny jumps soon …
Image credit: Image created by Anna Chaykina using images from www.duracell.com and www.energizer.com