Sharon Urias, Esq.
As previously discussed, colors may be trademarked, in particular when a product’s color develops a secondary meaning in the market, such as when companies and their associated products use specific colors that acquire and establish a distinctiveness in the minds of consumers. Examples include: UPS’s “Brown,” Tiffany’s “Blue,” and “Coco-Cola’s “Red.”
In a recent ruling, a federal judge denied a motion to dismiss by DineEquity, Inc. (“DineEquity”), franchisor of Applebee’s and International House of Pancakes restaurants, and other defendants, allowing for a trademark infringement lawsuit filed by Heartland Consumer Products, LLC (“Heartland”), maker of sucralose-based sugar substitute Splenda, to proceed.
Heartland alleges that DineEquity has replaced Splenda’s yellow sweetener packages at their restaurants with a lower-quality substitute sweetener made in China, housed in similar yellow packets, and frequently has represented to diners that the substitute sweetener actually is Splenda. DineEquity argues that the “yellow” packaging serves a functional purpose because patrons will be able to properly associate the substitute sweetener as being a sucralose non-sugar sweetener. The federal judge rejected that argument, however, noting that one could “reasonably infer” the yellow color used to package Splenda is specifically designed to signify the contents as being the Splenda brand sweetener.
This is not Heartland’s first legal entanglement over Splenda. In 2016, Heartland sued Dunkin’ Donuts (“Dunkin’”) over its use of a Chinese replica sucralose. According to Heartland, Dunkin’ misrepresented to consumers that the replica sweetener was Splenda. Heartland and Dunkin’ entered into a settlement in February 2017.
Now that the Heartland Consumer Products LLC et al v. DineEquity Inc. case has been given the green light to proceed, it will be interesting to see if Splenda’s “yellow packet” ultimately is afforded the same (or similar) protections as other well-known brands and their respective colors. Stay tuned.
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