A Taste of Trademark Law

A recent court opinion from the Eastern District of Pennsylvania concluded that a gift basket vendor could not claim exclusive rights to the phrase “A Taste of Philadelphia,” despite holding a federal trademark registration covering the phrase.

In R.J. Ants LLC v. Marinelli Enterprises, Inc., two Philly rivals squared off in a dispute over which party could use the phrase “A Taste Of . . .” to promote local treats such as pretzels, Tastykakes, Bookbinder’s soup, and Frank’s Black Cherry Wishniak soda.  R.J. Ants uses the mark “A Taste of Philadelphia” to sell a variety of products in gift baskets.  Marinelli Enterprises operates and franchises retail storefronts under the name “A Taste of Philly Hand Twisted Soft Pretzel Bakery.”  When attempts to negotiate a coexistence agreement failed, the parties found themselves in court to resolve the dispute.

The court considered the Third Circuit’s ten factors for finding a likelihood of confusion from its 1983 Interpace Corp. v. Lapp Inc. decision, and the court concluded that both parties could continue using their marks.  

In particular, despite the plaintiff’s federal trademark registration, the court found the plaintiff’s mark to be weak because (i) it was geographically descriptive, (ii) several others used variations of “Taste of Philadelphia” to sell food products, (iii) the plaintiff spent very little to advertise with the mark, and (iv) the plaintiff had not earned a profit using the mark for several years. 

The court also noted that each party targeted different customers (gift basket buyers v. walk up bakery customers), with different products having different price points (e.g., $5 pretzels vs. $50 -$300 gift baskets) and different marketing channels.

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