Would You Confuse 'Pierogi Fest' With 'Edwardsville Pierogi Festival'? Neither Would We

from the hot-potato dept

You write about enough trademark disputes and you come across some real whoppers. And, man, have I seen some doozies. Still, I never stop being suprised by how silly these things can get. Today's example of this revolves around the Chamber of Commerce for Whiting, Indiana sending out trademark threat letters to the Edwardsville Hometown Committee in Pennsylvania over the latter's 'Edwardsville Pierogi Festival.

Lawyers for the Whiting Pierogi Fest in Whiting, Indiana, recently sent a letter to the nonprofit Edwardsville Hometown Committee demanding it stop using the trademarked name or pay royalties for its use.

They claim the usage leads to “unfair competition” and “is likely to cause consumer confusion.”

Two separate letters were sent to this effect, actually, both making the claim that consumers would be confused between a suburban Chicago "Pierogi Fest" and the "Edwardsville Pierogi Festival." These claims rest on the Chamber's federally registered trademark for "Pierogi Fest", which is itself a laughably broad and almost perfectly descriptive phrase, causing me to wonder how the USPTO approved the mark to begin with. That aside, it should be obvious that any fears for consumer confusion between two geographically distinct (678 miles!) pierogi festivals would make Chicken Little roll his eyes. And it's worth mentioning that both of these threat letters included offers to license the trademark for money, as well.

Well, the Edwardsville Hometown Committee declined to license the phrase and has instead filed suit for declaratory relief. In that filing, the Committee reveals that it was not the only recipient of the Chamber's threat letters.

25. The Hometown Committee has both existing contractual relationships with the sponsors of the Edwardsvilie Pierogi Festival and potential contractual relationships with additional sponsors for upcoming Edwardsville Pierogi Festivals. 26. By sending correspondence to sponsors of the Edwardsville Pierogi Festival threatening them with liability for trademark infringement, the Chamber has purposefully and intentionally sought to harm the relationship of the Hometown Committee with its existing sponsors and to prevent prospective relationships between the Hometown Committee and future sponsors of the Edwardsville Pierogi Festival.

So the Chamber sent threats to the sponsors of the Committee's Pierogi Festival as well. Not a good look when we're talking about a trademark as broad and descriptive as "Pierogi Fest", particularly when there are lots of other festivals using that same name already. I'm not sure if the Chamber thinks it has a great licensing opportunity with all of the pierogi festivals out there or not, but it's certainly not doing a great job of protecting the trademark it never should have been granted.

I imagine Whiting's Chamber of Commerce actually never expected to find itself in court, figuring Edwardsville would simply bow to its demands and license the mark. Hopefully the court will see fit to take this case to its proper end and invalidate the "Pierogi Fest" trademark entirely.


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  • icon
    Anonymous Anonymous Coward (profile), 2 Aug 2017 @ 6:24pm

    Mmmmm...Pirogis

    Oh, right...the instant case...which will be higher, the potential fees from royalties, or the court costs fighting the refusal.

    BTW, I have had bad pirogi's, good pirogi's, and truly excellent pirogi's. I wonder which each of these festivals offer?

    The second question is, did anyone spell it correctly in their applications or marketing materials? And since a search offers both spellings, pirogi and pierogi as correct, which one is correct? (my spellchecker prefers the former).

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

  • identicon
    Andy, 2 Aug 2017 @ 8:11pm

    Well

    If worse comes to worse, they could change the name to "Varenyky Fest"

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

  • identicon
    Anonymous Coward, 2 Aug 2017 @ 8:18pm

    Love 'em

    Pierogi, momo, samosa, pelmeni, lukhmi...
    All are good. 😍

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

  • icon
    Ben (profile), 2 Aug 2017 @ 9:55pm

    Others?

    I wonder if any of the other Pirogi/Pierogi Festivals have been hit as well? A quick search ("pierogi festival -trademark") brings up Whiting and Edwardsville of course, but also Pittsburgh, Buffalo, Detroit, Cleveland, and Seattle - and that was only the first page or two).

    I hope the Whiting group's wallet gets hurt by this! Unless they were the same weekend, I don't see how there could have been any chance of confusion enough to justify a trademark complaint (and even then ...)

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

  • identicon
    Anonymous Coward, 2 Aug 2017 @ 10:10pm

    Merely FYI, primarily descriptive marks are not necessarily foreclosed from federal registration. While initially ineligible for registration on the Primary Register, they may nevertheless be eligible for registration on the Supplemental Register.

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

  • icon
    Killercool (profile), 2 Aug 2017 @ 11:03pm

    By being "creative", I think they sabotaged their own claim?

    IANAL, but...

    By making their trademark the purposely truncated "Pierogi Fest," aren't they basically admitting to the fact that "Pierogi Festival" is too generic and descriptive to qualify?

    I know that's why companies name their products things like "Shooz" instead of shoes, and use adjectives like "XTREEM!"

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

  • identicon
    Anonymous Coward, 2 Aug 2017 @ 11:41pm

    Pierogi Fest is just as generic as Comic Con. Why should such stupidity be limited to San Diego?

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

  • icon
    firebird2110 (profile), 3 Aug 2017 @ 12:01am

    Fest, like Con is purely descriptive, a commonly used contraction that's snappier and takes up less space on advertising material. If they'd called it "Pierogi Fezt" it would be like your "Shooz" example :-)

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

  • identicon
    Anonymous Coward, 3 Aug 2017 @ 2:06am

    Torture!!!

    Your most confusing headline yet! Please stop the torture!

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

    • icon
      Berenerd (profile), 3 Aug 2017 @ 4:16am

      Re: Torture!!!

      It is your, not you.
      I see nothing wrong with the title. I hope you are being sarcastic. *I*, being a long time reader, knew exactly what was meant. There is a suit that has one pirogi fest against another for using generic terms. What was confusing to you? I would like to help.

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

  • icon
    Tanner Andrews (profile), 3 Aug 2017 @ 4:51am

    Proper Response to Bumptious Threats

    Occasionally, there is a real possibility of infringement or confusion. While those appear to be the few golden needles among a hay-rack full of straw, I understand that the sample here may be selected.

    With al that disclaimed, then, let us take the opportunity to cheer for the Hometown Committee. They did the right thing. The received bumptious threat, and decided to have the matter properly sorted.

    By doing this, the Hometown Committee get the advantage of venue. It's in their district, not out in Indiana. The evidence is close at hand; they need not ferry witnesses and exhibits across three states.

    Ultimately it may be an expensive mistake for the Whiting chamber. And perhaps it will get them some publicity, to serve as a caution for the others.

    I have to admit that I have thought someone should do this in many of the previous cases mentioned here in Techdirt. It's easy for me to say this, as I am not licensed in the relevant courts and states.

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

  • identicon
    Anonymous Coward, 3 Aug 2017 @ 4:52am

    How much more generic of a name can one get than [Location] [Food] Festival?

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

  • icon
    Toom1275 (profile), 3 Aug 2017 @ 5:38am

    Are they also going to sue Wawa becuse "Hoagiefest" sounds too similar to "pierogi fest"?

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

  • identicon
    Thad, 3 Aug 2017 @ 10:26am

    Brian: Excuse me. Are you the Judean People's Front? Reg: Fuck off! Judean People's Front. We're the People's Front of Judea!

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

  • identicon
    Ralph Edmunds, 3 Aug 2017 @ 4:50pm

    I hate edwardsville pierogies

    I truly think Whiting should win this suit. Their piergoies are obviously superior to any made in northeast pennsylvania. I was confused as which pierogies to go eat based solely on how similar their names were.

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


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