Great Harvest Bread Co. uses the slogan “Bread. The way it ought to be.” Panera uses the slogan “Food As It Should Be.” Great Harvest alleges that Panera uses its similar slogan on products that directly compete with the bakery’s products, creating potential consumer confusion as to the source of Panera’s bakery products. Consumers could believe that Panera now uses bread from Great Harvest Bread Co.
How will the TTAB or Court handle this?
It will apply a number of factors called the “Polaroid factors” to evaluate the likelihood of consumer confusion if Panera uses its new slogan. In this case Great Harvest is the “senior user” and Panera is the “junior user.” These factors were created by the court in 1961 in a case involving Polaroid and have been the test for analyzing likelihood of consumer confusion ever since. Although there are 13 Polaroid factors, the most relevant factors in this case will be:
· How recognizable and distinctive Great Harvest Bread Co.’s slogan is (How much have they spent in advertising it? How long have they used it? Has the media done a story on it or referred to the slogan?)
· Similarity of the two slogans (they use similar words and convey the same message)
· Similarity of the products of Great Harvest and Panera (they both sell bread, sandwiches and bakery items)
· Panera’s intent (Did they adopt the slogan in bad faith?)
· Actual confusion (Are there known cases where customers did mistake the Panera slogan for Great Harvest slogan or vice versa?)
In this case, the first three factors seem to weigh in favor of Great Harvest. However, if Panera can establish it created its marketing message in good faith using fairly common phrases and during messages, and during the actual concurrent use by both there was no evidence of actual consumer confusion, it could prevail. The take away from all of this? The cost of this legal battle and potential rebranding could have been avoided with a simple trademark search. Prevention is cheaper than a cure.
Tracy Jong has been an attorney for more than 20 years, representing restaurants, bars, and craft beverage manufacturers in a wide array of legal matters. She is also a licensed patent attorney.
Her book Everything You Need To Know About Obtaining and Maintaining a New York Retail Liquor License: The Definitive Guide to Navigating the State Liquor Authority will be available next month on Amazon.com as a softcover and Kindle e-book.
Her legal column is available in The Equipped Brewer, a publication giving business advice, trends, and vendor reviews to help craft breweries, cideries, distilleries and wineries build brands and succeed financially.
She also maintains a website and blog with practical information on legal and business issues affecting the industry. Follow her, sign up for her free firm app or monthly newsletter.
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