In a lawsuit* filed in California this week, Once Upon a Farm – which makes organic refrigerated baby food in pouches – alleges that Abbott has infringed its trademark and confused consumers by sending out samples of its Pure Bliss by Similac infant formula in boxes emblazoned with the name ‘ONCE UPON A FARM.’
Once Upon a Farm – a small, but high-profile emerging brand in the baby food category with distribution in retailers including Target, Whole Foods and Costco – says it has received calls, emails and social media posts from consumers complaining about the unsolicited deliveries.
Lawsuit: Abbott’s use of the ONCE UPON A FARM mark is likely to cause consumer confusion
In the complaint, filed by law firm BraunHagey & Borden LLP, the company argues that Abbott is infringing a trade mark it registered in 2015, and says it has not responded to requests to stop using the ONCE UPON A FARM mark.
“Defendant’s use of the ONCE UPON A FARM mark is likely to cause consumer confusion and erode Once Upon a Farm’s goodwill and unique brand recognition in the baby food space. Indeed, numerous customers have already contacted Once Upon a Farm to complain about unwanted shipments in the belief that Once Upon a Farm was responsible for sending the products.
“Defendant’s use of the ONCE UPON A FARM creates the erroneous impression in consumers’ minds that Defendant’s products have been manufactured, approved, sponsored, endorsed, or guaranteed by, or are in some way affiliated with Plaintiff.
“Accordingly, Once Upon a Farm seeks a preliminary and permanent injunction, disgorgement of Defendant’s profits resulting from its infringing use, damages, costs, and attorneys’ fees, among other relief, to remedy Defendant’s conduct."
“Our entry to the baby food market obviously represents a challenge to traditional players. But competition should be fair.”
Cassandra Curtis, co-founder, Once Upon a Farm
How do you prove trademark infringement?
The factors courts use to decide trade mark infringement cases are often referred to as 'Polaroid factors' because they come from a case involving the Polaroid company (Polaroid Corp. v. Polarad Electronics, Corp., 287 F.2d 492 (2d Cir. 1961), and include:
(1) strength of the trademark;
(2) similarity of the marks;
(3) proximity of the products and their competitiveness with one another;
(4) evidence that the senior user may 'bridge the gap' by developing a product for sale in the market of the alleged infringer’s product;
(5) evidence of actual consumer confusion;
(6) evidence that the imitative mark was adopted in bad faith;
(7) respective quality of the products; and
(8) sophistication of consumers in the relevant market.
And in the ONCE UPON A FARM case, it’s not difficult to find evidence supporting all of these factors, one legal source told FoodNavigator-USA: “The name is the same, the product is in the same category and the complaint cites clear evidence of consumer confusion.
“While it does not appear to be on the actual product label, the products arrived in a box with the ONCE UPON A FARM mark on, while the name also appears on the Pure Bliss website [it has since been removed].”
Asked why Abbott would use a name that has been registered by another player in the same space, the source said it was impossible to speculate, although it could simply come down to a communication breakdown between marketing and regulatory affairs teams (ie. the marketing didn't run the box by the legal team).
Attorney: 'Same words, very similar product, same consumers, same trade channels'
Joel Rothman, a partner at Schneider Rothman Intellectual Property Law Group (which is not involved with this case), told FoodNavigator-USA: "Abbott’s use of the ONCE UPON A FARM mark for infant formula appears to directly conflict with the prior use of ONCE UPON A FARM for premium refrigerated baby food in pouches. Same words, very similar product, same consumers, same trade channels."
Abbott Nutrition has not (yet) responded to requests for comment, but we will update this article should it provide a statement.
*The case is Once Upon a Farm LLC. v. Abbott Laboratories Inc (dba Abbott Nutrition), 3:17-cv-00419 filed in the US district court, southern district of California, on February 28, 2017 .