Will the Real Original Gourmet Please Stand up? Trademark Ownership Showdown

Thank goodness for the UnionLeader, without which I bet none of us would know about the crazy contest between Jelly Belly and the Original Gourmet Food Company to determine who’s the Original Gourmet  . . .  of candy.  As far as I can tell, the UnionLeader broke the story yesterday, but no one else has picked up on it yet, despite how fascinating it is.  At least to me.  And I hope to you.

Original Gourmet’s rights in this logo mark (registration here) date back to its Intent to Use filing date of March 12, 2004.  The mark was federally registered on April 4, 2006 for “gourmet food items, namely, pretzels, brownies, cookies and popcorn” and that registration became incontestable on September 23, 2011.

Original Gourmet also claims rights in the logo to the right for cookies dating back to September 1, 2001.  For some reason, this logo mark really jiggled the folks at Jelly Belly the wrong way.  Jelly Belly filed 3 Extensions of Time to Oppose this mark between July 7, 2011 and September 28, 2011, the last giving it until December 4, 2011 to Oppose this mark’s registration.  Jelly Belly also sent the folks at Original Gourmet Food Company two cease and desist letters this summer, the first on July 19, 2011 and the second on August 25, 2011.  If you click on the links for these letters you will see only these lines, respectively:

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In light of the forgoing, Jelly Belly requests that you cease all use and plans to use ORIGINAL GOURMET or any mark that is confusingly similar to our client’s THE ORIGINAL GOURMET Marks on candy.

To be clear, Jelly Belly is not demanding your client cease all use of ORIGINAL GOURMET – only use of ORIGINAL GOURMET on candy.

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Since these letters are Exhibits to Original Gourmet’s lawsuit for declaratory judgment of non-infringement against Jelly Belly, my hunch is that Original Gourmet wanted to show the court only the facts relevant to its standing to sue and none of the other allegations made against it by Jelly Belly.  One thing that puzzles me though — why did Jelly Belly tell Original Gourmet it was only concerned with its use of ORIGINAL GOURMET on candy in August and then go and file an Extension of time to Oppose the ORIGINAL GOURMET logo mark for cookies in September?  Although I suppose maybe there’s something that explains this in the redacted portions of the letters from Jelly Belly, from this vantage point it kinda looks like Jelly Belly tried to leverage a potential Opposition proceeding over one mark to force a settlement over a different mark.  Jelly Belly may be certified kosher, but are its actions?

And does it matter?  Probably not.  Of the 15 federal trademark registrations that include the term ORIGINAL GOURMET, 6 belong to Jelly Belly for jelly beans, candy, toy dolls, candy, more candy and performances by an individual in a costume resembling a humanized jelly bean wearing a chef’s hat (yes, really!).  Jelly Belly’s rights in THE ORIGINAL GOURMET JELLY BEAN stem back to 1977 for jelly beans/candy.  Its rights in THE ORIGINAL GOURMET CANDY CORN date back to 1996.  Since Original Gourmet was formed in 2004, its rights to use the ORIGINAL GOURMET mark for candy cannot trump Jelly Belly’s in terms of first use.  I’m guessing Original Gourmet’s going to wind up belly-up on its attempt to use ORIGINAL GOURMET for candy, while it will win its case for baked goods.

Unless I am missing something (like what really transpired in the settlement discussions between Jelly Belly and Original Gourmet) this case seems very simple.  The cookie company should stick to baked goods and let Jelly Belly keep the candy market cornered.  Of course, where the fudge falls is anyone’s guess.