The M&M’s maker sued CocoVaa in March 2017 at the Virginia district court, alleging the name sounds too similar to its CocoaVia – nutritional dietary supplements brand. The court, however, dismissed the case last week. But a legal expert expects Mars will continue to pursue the issue.
CocoVaa is an artisanal confectionery shop setup around a year ago in Wisconsin. Owner Syovata Edari said the shop’s name was “carefully chosen,” and was named after a nickname her father, originally from Kenya, had given to her.
“Vaa in my father’s language means ‘here’,” she said. “It has nothing to do with CocoaVia.” Edari added she had never heard of that brand until Mars tried to block her trademark registration last year.
Edari alleged Mars had missed the deadline to oppose her registration at USPTO (United States Patent and Trademark Office) last year, which allowed CocoVaa to become registered. Mars sued the brand in court later, she said.
"If Mars were genuinely concerned about protecting their trademark, they should have opposed my registration before the USPTO rather than waiting for it to become registered, and then suing a small startup in federal court in Virginia where we don't do business. If I weren't an attorney, I would have had to fold up shop right then and there. It's an unethical way to conduct business," she said.
Mars told ConfectioneryNews it will always vigorously protect its trademark rights.
"We have an obligation to defend our trademarks for the simple reason that if we don’t, we risk losing our legal right to use them," Mars said. "This case was dismissed on a procedural technicality to allow for a more convenient venue for the defendant – not on its merits."
"We have the ability to refile this case, but we don’t have more to share at this time about next steps." Mars added.
Case moving to Wisconsin?
Edari is also a criminal defense lawyer with a background in trademarks, and she has been defending the case by herself.
One of the main issues the Wisconsin-based chocolatier argued was the suit was filed in Virginia where she does not do business. However, in a court document Mars filed later to oppose the court’s decision to dismiss the case, it says CocoVaa maintained a website accessible by people in all states.
“The case will almost certainly proceed though, just in another court, probably in [Edari’s] home jurisdiction,” said Ryan Kaiser, food and beverage class action defense attorney at Amin Talati & Upadhye, LLC.
Overlaps in trademarks
Kaiser said he understands how CocoVaa’s feels like it is being bullied, but Mars’ position is not without merit.
“Trademarks must be policed and enforced or the owner risks losing them,” he said. “For Mars’ part, they have obviously set up parameters for how and when they will enforce their rights against newcomers that they feel are ‘too close’ to their mark.”
“Here, the marks are very similar… There is clearly some overlap in that both are derived from cocoa,” Kaiser added.