Trademark

by Timothy Geigner


Filed Under:
confusion, trademark

Companies:
dawa food mart, wawa



Wawa Versus Dawa: Trademark Dispute Blamed On A Need To Police That Doesn't Exist

from the wawa? dept

We've made the point before. In the pantheon of trademark disputes, the most commonly trotted out excuse for overt protectionism is nothing but a headfake. While companies often proclaim their bullying actions are a requirement under trademark law's provision for active policing of infringement, the fact is that this requirement does not mandate that companies roadblock any and all similar uses to their marks. Instead, the idea is that trademark holders cannot allow actual infringements to go unchallenged.

For an example of the difference, we can point to the current dispute between two companies in the food mart business, Dawa Food Mart and Wawa Inc. The former is a single store in New Jersey that has operated for two years now. The latter is a mid-sized chain that only recently decided that Dawa infringed on its trademarks.

According to The Courier-Post, Wawa has filed a federal trademark infringement lawsuit against Dawa Food Mart, located at 15 Lafayette Street in Paterson, Passaic County.

The Korean owner of Dawa Food Mart, identified only as Han in the report, explained to the Courier-Post that "Dawa" means "welcome" in his native language. The shop has been open for about two years now.

It's worth noting that Wawa has a long history of policing its trademark to near feverish degrees, having filed suit against tour and gaming companies that use the term "wawa" in their names. At least Dawa Food Mart is more in the marketplace ballpark, though even then we're talking about completely different animals. Add to that the difference in stature and offerings and it's unclear how likely any real confusion could possibly be.

And, since the potential confusion is really the question in trademark actions, you might have expected Wawa to make the claim for it when asked to comment on the suit. But it only did so in a roundabout way, instead seeming to fall back on the old requirement to police excuse.

"Wawa spokeswoman Lori Bruce told the newspaper that the lawsuit is about fulfilling an "obligation to protect consumers from any likelihood of confusion" and protecting "the brand name," symbolized by the Canada goose whose name is a direct translation from the Native American language used in the region."

There are some barriers to Dawa winning out, which mostly amounts to both brands using the color red on signage. Still, it seems silly to soberly worry about any real customer confusion here.


Reader Comments

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  • identicon
    Anonymous Coward, 6 Feb 2017 @ 6:04pm

    I guessing the Municipality of Wawa will be in their sights soon.
    http://www.wawa.cc/

    reply to this | link to this | view in chronology ]

    • icon
      Roger Strong (profile), 6 Feb 2017 @ 6:26pm

      Re:

      If you ever stay the night in Wawa, travelling between eastern and western Canada, you discover that the big Canada goose statue isn't the only one. Having become the symbol for the town, every local company features it. It's on menus and whatnot.

      Scared the hell out of us. We thought we'd walked into a goose cult.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 6 Feb 2017 @ 6:05pm

    And that is why Sheetz is better.

    reply to this | link to this | view in chronology ]

  • identicon
    John Cherry, 6 Feb 2017 @ 6:18pm

    DAWA vs WAWA

    People DO confuse trademarks. When I worked for a Patent & Trademark Attorney about 25 years ago, I had personal experience of this with trademarks much less confusingly similar than 'WAWA' and 'DAWA.'

    reply to this | link to this | view in chronology ]

    • icon
      PaulT (profile), 7 Feb 2017 @ 1:34am

      Re: DAWA vs WAWA

      Were those customers genuinely confusing the trademarks, or were they lawyers "confusing" things in order to expend their own trademark protection?

      reply to this | link to this | view in chronology ]

    • identicon
      TripMN, 7 Feb 2017 @ 2:22pm

      Re: DAWA vs WAWA

      Being unable to keep two similar sounding, nearly nonsense (to an only English speaker) words apart in their mind does not constitute brand confusion, that's just word confusion. Calling it brand confusion means they don't know either brand and probably have no loyalty to either.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 6 Feb 2017 @ 6:35pm

    Having lived just down the road from Wawa...

    ...as in the town of Wawa, which is a western suburb of Philadelphia not far from Media, I can categorically state that NO consumer is going to confuse it with Dawa or Tata or Gaga or anything else, thanks to decades of saturation advertising. It's nearly inescapable -- which I'm certain is not an accident. And in recent years, the small Wawa sites have been replaced with MEGA-WAWA-HUGE-WAWA complexes that are impossible to miss at street level and on Google Earth.

    I think this is a case of Wawa's legal department fabricating a non-existent problem in order to justify its existence.

    reply to this | link to this | view in chronology ]

    • identicon
      gw, 7 Feb 2017 @ 7:10am

      Re: Having lived just down the road from Wawa...

      Absolutely accurate. Wawa is a huge chain, currently expanding into Florida, and up and down the East Coast. Anybody who confuses a Wawa with the Dawa Food Mart should probably be banned from buying a bag of potato chips and a coke. That would be generic potato chips and 'coke' registered trademark of the Coca Cola Co. all rights reserved.

      reply to this | link to this | view in chronology ]

  • icon
    Hugo S Cunningham (profile), 6 Feb 2017 @ 9:46pm

    Has anyone asked Baba Wawa for her view?

    reply to this | link to this | view in chronology ]

  • identicon
    TheVillageDolt, 6 Feb 2017 @ 10:46pm

    Silly question

    We have spoken many times about trademark infringement between companies in different markets with similar sounding names. Generally speaking if there is little chance of confusion there isn't an infringement. But what happens if one of those companies decides to enter into that unrelated business? i.e. Abacus the restaurant suddenly decides to enter the software business where and Abacus the software company is already active?

    reply to this | link to this | view in chronology ]

  • icon
    JustMe (profile), 7 Feb 2017 @ 3:37am

    Great - my family can stop shopping at Wawa

    Most excellent Techdirt, I appreciate the service you provide by letting me know which clueless and litigious companies I can safely avoid.

    I see their Privacy Policy (https://www.wawa.com/privacy.aspx) and Terms and Conditions (https://www.wawa.com/terms.aspx) both require Javascript to be enabled, which is probably a violation of some fair access act.

    This level of precision is also dumb:"© 2017 Wawa, Inc. (Version: 2.13.6236.25792 on PRDWCW02)"

    reply to this | link to this | view in chronology ]

  • icon
    Prashanth (profile), 7 Feb 2017 @ 4:48am

    Establishment versus small player

    If the fight between Haagen-Dasz (an larger player with a faux-Scandinavian name) and Frusen Gladje (a smaller player with an actual Scandinavian name) is any indication, even if Dawa wins, it may be a pyrrhic victory.

    reply to this | link to this | view in chronology ]

  • icon
    ShadowNinja (profile), 7 Feb 2017 @ 6:41am

    This sounds similar to a textbook example trademark infringement case in Business Law 101

    Years ago I took a Business Law 101 course, and this Dawa and Wawa case sounds almost exactly like one of the example cases of a trademark infringement suit.

    In that case it was 7/11 suing a convenience store called 8/11 that was quite similar to 7/11.

    7/11 clearly had a much stronger case there then Wawa does against Dawa. And yet when it got to court, 7/11 lost the case.

    The main reason 7/11 lost? 7/11's stores and layouts were too generic and not uniquely identified with them. There was no other potential infringement of the 7/11 logo/etc in 8/11. All they had was a claim to a similar name.

    Now if you tried to rip off say McDonald's with a store called say "McSmith's", with pink uniforms with a big M on them, and a big pink M sign outside, that's a different story. Then you're ripping off much more than just McDonald's name.

    So given that case, I highly doubt Wawa can win this if it actually goes to court.

    reply to this | link to this | view in chronology ]

    • icon
      PaulT (profile), 7 Feb 2017 @ 6:51am

      Re: This sounds similar to a textbook example trademark infringement case in Business Law 101

      "Now if you tried to rip off say McDonald's with a store called say "McSmith's", with pink uniforms with a big M on them, and a big pink M sign outside, that's a different story. Then you're ripping off much more than just McDonald's name."

      How about if you have a burger called the Big Mick with no sesame seeds on the bun and the Golden Arcs instead of the Golden Arches?

      Sorry, couldn't resist, but it's weird how an 80s comedy might have a good lesson on how far might be too far in infringement.

      reply to this | link to this | view in chronology ]

  • icon
    Mason Wheeler (profile), 7 Feb 2017 @ 6:57am

    "Wawa spokeswoman Lori Bruce told the newspaper that the lawsuit is about fulfilling an "obligation to protect consumers from any likelihood of confusion" and protecting "the brand name," symbolized by the Canada goose whose name is a direct translation from the Native American language used in the region."

    Oh, is that what it is?

    I always thought it was meant to represent the words of a thirsty two-year-old!

    reply to this | link to this | view in chronology ]

  • identicon
    stosh, 7 Feb 2017 @ 10:32am

    They're fighting over customers too stupid to tell a "W" from a "D"....makes ya wonder.

    reply to this | link to this | view in chronology ]

  • identicon
    William Braunfeld, 7 Feb 2017 @ 11:47am

    What is truly upsetting is the financial divide here; what Wawa probably considers "minor" legal fees to fight this dispute may kill Dawa entirely, even if Dawa wins.

    reply to this | link to this | view in chronology ]


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