Five Below, Trendy Retailer, Sues 10 Below, Ice Cream Seller, For Trademark Infringement

from the i-give-up dept

When it comes to frivolous trademark lawsuits, you think you've seen it all, but then one comes along that makes you throw up your hands. Here at Techdirt, we understand that the average individual might not know some of the broader nuances of trademark law, such as the focus on customer confusion, or the requirement, in most cases, that the parties reside within the same industry or market. But that understanding goes out the window when we're talking about a lawsuit brought by a large corporation that, like, totally has lawyers and stuff. I use that tone and vernacular specifically as preparation for stating that Five Below, the large retailer with trendy products for less than five bucks, has sued 10 Below, a small chain of ice cream shops.

And before you ask, yes, pretty much all of the media covering this is actually pointing out how divergent the markets and industries of these two companies is, often in spectacularly funny fashion.

One store sells remote-controlled poop, mini-plasma balls, and Mongolian Faux Fur Blankets, all for $5 or less. The other store sells that trendy rolled ice cream.

But Five Below (currently 600 locations) says that 10 Below (five locations, only one in Philly) is violating the discount store's trademarks, and the company has told the rolled ice cream shop to find a new name.

For anyone who has watched trademark proceedings in the past, this is something of a laugher. Claiming that anybody might be confused between the type of things that Five Below sells and an ice cream shop is going to be something of a tough sell in any courtroom. And, once you understand the reason for each company's name, you will quickly realize that this is not the case of 10 Below trying to trade on Five Below's good name. Five Below sells things for five dollars or less, where 10 Below refers to the way the ice cream shops make their product, including dropping the temperature to minus-ten degrees. There's just not synergy between the names here at all. In the filing (below), Five Below makes much of its sales of candy and ice cream at its stores, except that I can't find ice cream listed in this section on its website and the candy referenced is merely other brands being sold there.

And IP attorneys looking through all of this seem to agree.

"It seems to me that you have a very large company pounding its chest and trying to intimidate a smaller company," says Flaster Greenberg intellectual property attorney Jordan LaVine, whose clients include Martha Stewart and The New York Times. "This is a classic example of trademark bullying. It's an unfortunate situation for a smaller company that might not have the money to defend itself."

Plus, 10 Below first opened in New York City in 2015, when Five Below already had a presence there, but Five Below didn't take them to court until more than two years later.

"They should have taken action a lot sooner than the end of 2017," says LaVine.

In other words, this is pretty much ticking off every checkbox for how to lose a trademark bullying lawsuit. It's enough to wonder whether all of this came down to 10 Below opening a location near Five Below's company HQ in Philadelphia and this is all coming from executives that noticed and went on an ego trip. Regardless, this will hopefully be quickly laughed out of court.


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  • icon
    Anonymous Anonymous Coward (profile), 18 Dec 2017 @ 7:18pm

    Not Low Enough

    Maybe, just maybe, 5 Below is seeking a lower level.

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

    • icon
      Bergman (profile), 19 Dec 2017 @ 11:42am

      Re: Not Low Enough

      In Trademark law, it seems to be all about a race to the bottom. Five below has a good long distance before it reaches zero Kelvin.

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

  • icon
    Ryunosuke (profile), 18 Dec 2017 @ 8:00pm

    it's a race to absolut zero

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

  • icon
    DOlz (profile), 18 Dec 2017 @ 8:20pm

    I’m confused is Five Below on the Fahrenheit or Celsius scale?

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

  • identicon
    Jamie, 18 Dec 2017 @ 8:35pm

    Is this where Bacardi need to step in with their trademark for "42 Below" and tell Five Below to shut the $#!@ up?

    (Yes, I know it's vodka vs retail stores, but that sort of common sense hasn't stopped this sort of thing before.)

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

  • icon
    Roger Strong (profile), 18 Dec 2017 @ 8:40pm

    Look Out Below

    One store sells remote-controlled poop,

    Evidently the remote has a "launch trademark lawsuit" button. Hence the level of knowledge and ethics of thier legal representation.

    I had the IMDB page open, so I did a quick search for "below." And looked only at entries with [number] below.

    Companies:

    • 9 Levels Below FX

    • Fifteen Below Zero

    • 30 Below Entertainment

    • 40 Below Films

    • 40 Below Productions Inc.

    • 42 Below

    • 54 Below

    • 110 Below Productions

    • 300 Below

    Less relevant: show titles

    • Below Zero (1925) (Short)

    • Below Zero (2008) (TV Episode)

    • Below Zero (2009) (TV Episode)

    • Below 0° (2017) (Short)

    • Three Below Zero (1998)

    • 3 Below (2005) (Video)

    • 3 Below (2018) (TV Series)

    • 6 Below (2016)

    • 6 Below (2017)

    • 7 Below (2012)

    • Eight Below (2006)

    • 20 Ft Below

    • 21 Below (2009)

    • Below 22 Degrees (2014) (Short)

    • 30 Below (in development)

    • Forty Below (2010) (Short)

    • 48 Below (2010)

    • 100 Degrees Below Zero (2013)

    That's just one industry. No, you do not get exclusive use of an entire naming convention across all industries.

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

  • identicon
    Zem, 18 Dec 2017 @ 10:30pm

    This comment is 6 Below the top.

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

  • icon
    That Anonymous Coward (profile), 18 Dec 2017 @ 10:45pm

    Protip: If you have the power, fire the exec who cried & the lawfirm who took the case.
    This is a pointless waste of cash, you will not win, the crying exec will not be happy. Dump both of them before they tell you they can totes win this on appeal.

    You have 600 locations and you think 5 ice cream shops represent a threat to your brand? Seriously? Have you been tested for lead exposure? The biggest damage out of this is going to be the countless stories covering the trademark bully threatening a tiny ice cream chain where there is no hope of confusion in the market place (unless you are a lawyer retained by 5 Below who gets paid win or lose, but bringing a case means you get paid more).

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

  • identicon
    Pixelation, 18 Dec 2017 @ 11:45pm

    You'd think...

    it was beneath them, but look out Below.

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

  • identicon
    Anonymous Coward, 18 Dec 2017 @ 11:57pm

    Weather service sues Five Below for trademark infringement...

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

  • icon
    charliebrown (profile), 19 Dec 2017 @ 12:27am

    I think they're just upset because 10 below is cooler

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

  • identicon
    Anonymous Coward, 19 Dec 2017 @ 3:56am

    Thar she ⒷⒺⓁⓄⓌⓈ‼ ™

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

  • identicon
    peter, 19 Dec 2017 @ 3:56am

    Amicable solution

    Dear Sir (or lawyer representing Sir)

    You seem to be confused that degrees are the same as dollars. I can assure you they are not.

    However I have a proposal that should clear up that confusion. I will change my name to 5 Dollars Below and you change your name to Ten Degrees Below. Simple. I look forward to you agreement.

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

  • icon
    Ninja (profile), 19 Dec 2017 @ 5:15am

    How many below is the level of petty/useless trademark disputes? Wait, don't answer, you might be sued.

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

  • identicon
    Anonymous Coward, 19 Dec 2017 @ 5:28am

    What's next, sue meteorologists who report weather and say it's "5 below outside" (either in F or C)?

    Maybe we should just report all temperatures in Kelvin to make sure nobody violates their TM and causes "irreparable harm" to their company image.

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

    • identicon
      Anonymous Coward, 20 Dec 2017 @ 6:30am

      Re:

      Maybe we should just report all temperatures in Kelvin to make sure nobody violates their TM and causes "irreparable harm" to their company image.

      The USA would have to use Rankine, just to be different.

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

  • identicon
    Anonymous Coward, 19 Dec 2017 @ 5:33am

    I should start

    an undertaking business and call it "6 Under" to see if I would get sued.

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

  • identicon
    Anonymous Coward, 19 Dec 2017 @ 6:23am

    This doesn't even pass the laugh test. I don't see this lawsuit proceeding to a trial as I think the judge will toss this lawsuit, i.e., dismiss it with prejudice.

    There is nothing similar between these two stores and you can't trademark "below" because it's a generic, common, word used all the time. What are they going to do next? Sue Disney for making the movie "Eight Below"?

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

  • icon
    rkhalloran (profile), 19 Dec 2017 @ 6:42am

    the we-sell-food-too argument

    There's a couple of their stores in my area; mostly they're selling cheap t-shirts, closeout toys/videos/game disks/books, phone accessories (cases/screen guards/charging cables), and by the checkout there's a wire rack for candy & a cooler for ice cream sandwiches/cones. You'd miss it if you weren't looking for it.

    Going after these guys for infringement is way beyond the pale.

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

  • icon
    Oblate (profile), 19 Dec 2017 @ 6:45am

    Scooped by an ice cream shop!

    Maybe Five Below is just anticipating a future name change necessitated by inflation? Or they could have been planning an upscale version, with items twice as nice as their regular stores?

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

  • identicon
    I.T. Guy, 19 Dec 2017 @ 7:49am

    10 Below 42 S 17th St, Philadelphia, PA 19103
    Guess where I am going after work? It ain't 5 below.

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

  • icon
    Flakbait (profile), 19 Dec 2017 @ 9:30am

    Dangle that participle!

    "...but then one comes along that makes you throw up your hands."

    So, which case was it that made you eat your hands in the first place so that this one would cause you to throw them up?

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

  • icon
    Flakbait (profile), 19 Dec 2017 @ 9:34am

    Careful!

    "In the filing (below), Five Below makes much..."

    You're tempting fate here. Filing below is awfully, awfully close to Five Below. The fact that they are four consecutive words in a single sentence is likely to cause consumer confusion.

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

  • identicon
    Thad, 19 Dec 2017 @ 9:57am

    Shit. They'll be coming for 2 Below next.

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

  • icon
    John85851 (profile), 20 Dec 2017 @ 10:15am

    Who are the lawyers who take these cases

    I've said it before and I suppose I'll say it again: who are the lawyers who are taking cases like this:
    1) Do they not know copyright/ trademark law? If not, why are they taking on cases if they don't know the relevant laws?
    2) Do they know the law and are ignoring it just to take the client's money? Is this an ethics violation?

    Either way, these lawyers should be called out and have their bar association/ license reviewed.
    If more lawyers learn that their licenses could be revoked for starting dumb lawsuits like this, then maybe there would be less bullying.

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

  • identicon
    Andrei Mincov | Trademark Factory®, 8 Jan 2018 @ 12:07am

    As this unfolds, I'm wondering how Five Below PR machine is going to handle the notion that it's trademark lawsuit is just trademark bullying. Indeed, different names, different meanings, different industries. Likelihood of confusion? Extremely remote...

    Andrei Mincov

    Founder and CEO of Trademark Factory® / https://trademarkfactory.com, the only firm in the world that offers trademarking services with a predictable, guaranteed result, for a predictable, guaranteed budget. We can help you register your trademarks with a free comprehensive trademark search, for a single all-inclusive flat fee, with a 100% money-back guarantee.

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


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