New slogan, new packaging, and a letter of protest: Danone v. Chobani

Food and beverage giant Dannon’s parent company is the latest to join the recent trend of brand owners pushing back against allegedly infringing trademarks and trade dress on competitors’ packaging. 

Dannon’s parent company, Danone, owns the STOK brand of ready-to-drink cold-brew coffee products, one flavor of which is offered using the branding BRIGHT & MELLOW. Danone has used BRIGHT & MELLOW for nearly five years and owns a pending federal application for the phrase with the US Patent & Trademark Office. After rival food giant Chobani acquired La Colombe, a coffee brand also offering ready-to-drink cold brew coffee products, Danone alleges that Chobani altered La Colombe’s packaging and slogan from “Bright & Flavorful” to “Bright & Mellow” to mimic Danone’s STOK brand. Chobani has not yet filed an answer or made any public comment.

While brand owners will surely be observing how the case develops over the next few months to inform their trademark and trade dress enforcement strategies, there is still plenty to take away from the suit even before Chobani responds. From a big picture view, Danone’s complaint suggests it thinks more highly of its trademark infringement claims than its trade dress claims. Although Danone’s complaint discusses similarities between its STOK packaging and the redesigned La Colombe packaging, Danone’s federal claims focus on Chobani’s use of its BRIGHT & MELLOW trademark rather than trade dress infringement. This follows current trade dress jurisprudence, as clearing the bar to show that trade dress is protectable is often more difficult compared to establishing the same for a trademark. Danone’s strategy was likely also informed by its pending application for the BRIGHT & MELLOW mark. At the time Danone filed suit, the Trademark Office had approved the mark for publication. 

However, two weeks after Danone filed suit, the Trademark Office withdrew the application from publication for further review after accepting a letter of protest. The letter of protest argued that the mark was merely descriptive and included evidence of third parties using the terms “bright” and “mellow” to describe coffee flavors. While letters of protest are published anonymously, one can speculate that after being served with Danone’s lawsuit, Chobani saw an opportunity to stymie Danone’s application and a primary basis for its suit by submitting a letter of protest. Because the application had not yet been published, Chobani did not need to spend the time and resources on an opposition proceeding to go on the offensive. While the Trademark Office is still evaluating Danone’s application, it is possible that the application could have avoided drawing a letter of protest had Danone waited a few months before taking enforcement action. Danone could perhaps have then asserted a registration in its suit rather than merely relying upon its common law rights and pending application.

Overall, Danone’s suit indicates that trademark rights continue to be favored anchors for enforcement actions involving trade dress rights. However, Danone choosing to file suit based on common law rights and a pending trademark application illuminates the dangers in enforcing rights over an arguably descriptive trademark. Brand owners take note: drawing attention to a pending trademark application through enforcement efforts may make their weaker, more descriptive marks vulnerable should their enforcement target fight back against a pending application. As always, the stronger and more distinctive a brand’s trademark or trade dress is, the more likely it is that the owner’s enforcement efforts will succeed. Brand owners will be closely monitoring the pending suit and how the Trademark Office re-evaluates Danone’s BRIGHT & MELLOW mark to assess the best strategies for their portfolios and enforcement programs.

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