Great Harvest Bread Co. has filed a trademark infringement suit against Panera Bread Co. in a federal court in North Carolina, accusing the company of using a similar slogan in advertisements. In the suit, Great Harvest claims that Panera’s slogan “Food As It Should Be” is a lot like theirs, which is “Bread. The Way It Ought To Be.” Panera debuted its own last summer as part of an initiative to stop using artificial preservatives, colors, flavors, and sweeteners in its food by the end of this year. Great Harvest claims that it has been using its slogan since August 2014 and received registration approval for it in December 2015. Panera filed for registration for the new slogan in February 2015, and registration is pending. According to the suit, because both chains offer the same goods—freshly baked items—and services—food preparation—the two slogans could confuse customers into assuming an association between the companies.
Courts will often conduct a ten-factor test when making a determination of a likelihood of confusion: the strength of the trademark owner’s mark; the degree of similarity between the two marks; evidence of actual consumer confusion; the marketing channels; the types of goods involved and the degree of care likely to be exercised by the purchaser; the alleged infringer’s intent in selecting the mark; and other facts showing that the consuming public is likely to expect the trademark owner to manufacture a product in the alleged infringer’s market, or is likely to expand into that market. Often times, courts will use this test to analyze noncompeting goods, since the final point addresses the potential for overlapping markets.
Great Harvest and Panera appear to sell competing goods and services, and the court will likely use the factor test in determining the likelihood of confusion, but will focus mostly on actual mark similarity because they’re already in the same market. This is what we saw in A&H Sportswear, Inc. v. Victoria’s Secret Stores out of the 3rd Circuit. In that case, A&H sued Victoria’s Secret for trademark infringement over The Miracle Bra mark for swimwear, claiming that it was confusingly similar to its Miraclesuit swimwear mark. The court determined that marks “are confusingly similar if ordinary consumers would likely conclude that [the two products] share a common source, affiliation, connection or sponsorship.” It considered the sight, sound and meaning of the marks when addressing mark similarity, before conducting the factor test.
It seems like focusing on mark similarity would most likely be the analysis here. According to the Saint Louis Post-Dispatch, Great Harvest’s cease-and-desist letters to Panera stated that “it should be” and “it ought to be” were understood in the same way. And that’s not untrue. So, would a consumer coming across these two slogans assume a “common source, affiliation, connection or sponsorship”? Panera has most likely developed its own distinctiveness through its Panera trademark, and in conjunction with this slogan it might lessen any confusion between theirs and the Great Harvest one.
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This will be a good case to watch to see where one court might draw the line between two competing companies using slightly similar slogans. Stay tuned to our blog for more on this suit.
