by Timothy Geigner

Filed Under:

dawa, wawa

Trademark Bullying Works: Dawa Food Mart Agrees To Name Change After Trademark Suit From Wawa

from the why-they-do-it dept

You may recall that earlier this year, mid-sized convenience store company Wawa filed a trademark suit against the Dawa Food Mart, a single location food market in New Jersey. At the time, we pointed out several problems with the lawsuit, including the stature of the companies being vastly different, the offerings of the companies not being particularly identical, and the fact that it was clear that the Korean owner of Dawa was not attempting to trade on Wawa's name (Dawa means "welcome" in his language). What all of this amounted to was pretty clearly a low likelihood of any actual confusion in the marketplace, which was nearly admitted to when Wawa's reps excused the legal action away as obligated under trademark law, despite that not being actually true.

But, as we keep pointing out, trademark bullying like this works, and now Dawa Food Mart has agreed to change its name in exchange for Wawa not seeking damages against it.

The proposed order, which includes a permanent injunction barring the use of the Dawa name, has been submitted for the approval of U.S. District Judge Katherine Hayden in Newark. Dawa would have to change its name within 90 days of court approval. The store by that time also would have to use or destroy all materials with the Dawa name.

Under the proposed agreement, Wawa would drop demands that Dawa be required to pay compensatory damages, as well as Wawa’s legal expenses and attorneys’ fees. Dawa would be obligated to pay $12,000 to Wawa if it’s found to have violated the proposed agreement.

There's some irony here in the Korean owner being forced to cease using a word that means "welcome" for his business, all because a bigger corporate entity threatened him with compensatory damages. Irony aside, this is unfortunate, not the least because of the expense Dawa will take on in changing its name, signage, branding, etc., but also because of the time sink this surely was for him. Still, this kind of bullying works because the potential damages outweighed the already sunk costs for Dawa.

It's worth repeating the trademark law was designed to benefit the public. Given the lack of real confusion between the two businesses, I'm going to need some help seeing where the beneficiary of this trademark action is the public and not Wawa corporate interests.

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