A long-running dispute between Fage Dairy Processing Industry (which makes Fage Total Greek yogurts), and General Mills (which makes Total branded cereals) came to a head on September 14 when the TTAB refused Fage’s application to register certain design marks containing the word Total for yogurt and other products on the grounds they would cause confusion with Gen. Mills’ registered Total design mark for breakfast cereal.
Fage calls for court to reverse recent TTAB trademark ruling
The TTAB decision was swiftly followed by a lawsuit from General Mills filed just two days later in Minnesota seeking to stop Fage using the word Total on its yogurts as a result.
This in turn prompted a countersuit from Fage demanding the court overturn the TTAB ruling and declare that its use of the words ‘Fage Total’ on its Greek strained yogurts does not infringe any General Mills trademarks.
In its complaint filed in New York on September 30, Fage hints that General Mills may be motivated less by concerns about ‘consumer confusion’ than a desire to get one up on an arch rival in the yogurt fixture (in which General Mills now has a growing presence via its Yoplait Greek brand).
General Mills, notes Fage, “recognizing the potential significance of Greek strained yogurt in the US market, began to develop a Greek strained yogurt product to sell under the Yoplait brand which was designed to compete directly with Fage Total yogurt.”
General Mills has not objected to other firms’ registrations of word ‘Total’ on pack
It also observes that General Mills appeared to be comfortable with “countless third party uses of and registrations for ‘total’ combination marks for food products, vitamins, dietary supplements and other grocery store products including Colgate Total toothpaste and Tide Total Care detergent.”
Yet after “13 years of peaceful co-existence between plaintiffs and defendants in the US marketplace”, claimed Fage, General Mills “suddenly and belatedly objected to the use of the Fage Total mark for yogurt, ambushing Fage by filing a complaint for trademark infringement… immediately after the TTAB order was issued.”
It added: “At this late date, defendants [General Mills] are now attempting to extend their claimed rights to the common English word ‘Total’ from use in connection with wheat flake cereal to all food products.”
TTAB ‘frequently adopted wholesale the language of the defendants’ trial brief’
But its biggest criticism was leveled against the TTAB, which it argued had based its conclusions “on numerous erroneous factual findings that are directly contradicted by the record evidence and/or are based solely on the self-serving and uncorroborated testimony of Defendants’ [General Mills’] officers”.
The TTAB, it alleged, “frequently adopted wholesale the language of the defendants’ trial brief, including argumentative and prejudicial language of counsel which had no support in the record.”
TTAB: Consumers could be confused
In its controversial ruling, which can be read here , the TTAB concluded that the “similarities in the marks in their entireties outweigh the dissimilarities” and that there “is a likelihood of confusion” between the two.
While General Mills had not objected to the use of the word Total in other consumer packaged goods, it had successfully argued that cereals and yogurts were much more closely associated in consumers’ minds - with both promoted as healthy breakfast items for example – claimed the TTAB.
It added: “Finally, it is a well-established principle that one who adopts a mark similar to the mark of another for the same or closely related goods does so at his own peril, and any doubt as to likelihood of confusion must be resolved against the newcomer and in favor of the prior user or registrant.”
A General Mills spokeswoman said: “As a standing practice, we don’t comment on pending litigation.”
The rise and rise of Greek yogurt
According to Fage, which opened a new plant in Johnstown, New York in 2008 to meet growing demand, US sales of Fage Total Greek strained yogurt have been “meteoric”.
It adds: “Today, FAGE TOTAL yogurt is the fourth largest selling branded yogurt in the US in terms of retail sales value.”
General Mills has also predicted strong growth in Greek yogurt sales this year after bringing on new manufacturing capacity and ratcheting up advertising spend.
In a conference call with analysts last month, US retail boss Ian Friendly said sales of General Mills’ Yoplait Greek-style yogurts had jumped up by 50% in the first quarter of fiscal 2012, and were set to accelerate further following the introduction of new manufacturing capacity last month.
Category growth continued to be driven by the burgeoning Greek segment, said Friendly. ”In fact, sales of Greek-style yogurt have doubled over the last 12 months and today make up roughly one quarter of category sales.”