What's in a Name? McCormick & Company, Incorporated v. Primal Palate, LLC

Posted: January 30, 2019 by Erin H. Cancienne

This is the question that has arisen in a lawsuit filed by McCormick & Company, Incorporated against Primal Palate, LLC.  McCormick’s claim is that Primal Palate’s New Bae is infringing on the trademark of McCormick’s Old Bay.

Old Bay Seasoning was first developed in Maryland in 1939 and is marketed to be used with seafood, poultry, salads and meats.  In 1990, McCormick purchased the rights to the seasoning blend Old Bay.  This blend is described by McCormick’s representative as “a household favorite with millions of loyal consumers here in Maryland and around the country.”  McCormick asserts that it spent significant resources to expand brand recognition, and offer a variety of related goods and services under the Old Bay Mark.
 
In 2017, Primal Palate launched its own seasoning blend and named it New Bae.  Primal Palate’s marketing includes phrases such as “out with the Old, and in with the NEW”.  Primal Palate has stated in a posted statement that the New Bae Blend is “of course a nod to Old Bay…”  However, Primal Palate argues that the products are not likely to confuse customers, and contends that the blends are very different.

McCormick filed a lawsuit in the United States District Court in Baltimore asserting that New Bae was attempting to capitalize on the fame and good will of McCormick’s Old Bay mark.  Specifically, McCormick asserted that Primal Palate’s use and promotion of the New Bae mark on a seasoning blend that competes with Old Bay seasoning blend is likely to cause confusion as to the source, affiliation, or sponsorship of Defendant’s products.  According to McCormick’s Complaint, the name suggests that the Primal Palate blend is a new version of Old Bay.  Primal Palate denied the allegations by Plaintiff, and among its defenses raised the issue of parody.
 
A trademark parody is the appropriation of another’s mark as a well-known element of popular culture and then building on it to contribute something new for humorous effect or social commentary.  To consider whether something is a trademark parody, you must have something that brings to mind the original, as well as a message that communicates some element of satire, ridicule, joking or amusement.  Once there is a determination that a parody occurred, the court then needs to determine whether that parody infringed on the original trademark.  The Court will have to consider several factors to determine whether or not the parody infringes on the original trademark. Some of the factors include: the strength of the original mark, similarity of the marks, the dissimilarity of the products, the dissimilarities of the distribution and advertising channels.

At this stage of the litigation, it is unclear how a court may weigh the factors.  There are arguments for both sides of this litigation.  New Bae has argued that their product does not infringe on any trademark for Old Bay as the names and marks are not similar enough to infringe on Old Bay’s trademark.  Old Bay can argue that New Bae is a similar product, distributed in similar ways, and that the name New Bae is too close to its own name.  We’ll have to see how the spices shake out as this case progresses.



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