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March 9, 2015
VIA ELECTRONIC MAIL, UPS, AND EDIBLE ARRANGEMENTS
RE: International Womens Day & Denial of frivolous claims
and affirmative statement of Naked Granola, LLCs rights. (Our File
No. 00000001.0000)
Dear Friend,
This letter is in response to your Feb 23, 2015 letter sent on
behalf of Bear Naked, Inc. (GRUMPY BEAR). As you may know, we
represent Naked Granola, LLC (TEAM AWESOME) in regards to its
intellectual property & trademark matters. On occasion, we also
provide TEAM AWESOME with babysitting & basic household
plumbing services.
Thanks for your letter! We at TEAM AWESOME really love hearing
constructive comments about our Naked Granola products from our
dear friends all over these United States of America. As you may
know, our delicious granola flavors are inspired by family trips to
amazing locations across the country. And guess what? the
suggestions outlined in your letter have inspired us to create an
all-new flavor!
Heres a quick preview of the package design. What do you think?
(Please dont be too harsh, its just a rough draft)
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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This flavor is still just in the early stages of product
development. Many things need to happen before we launch a new
product, including evaluating market demands and formulating the
delicious flavors. This process may be streamlined here, though,
since Taste of Legal already contains an excess of Demands and the
product will likely be quite Bland & Tasteless.
Its still a work in progress.
Anyhoo Happy International Womens Day!
Did you know that we at TEAM AWESOME (Naked Granola) commit a
minimum of 1% of our Net Sales to alleviating the avoidable human
suffering of starvation & hunger?
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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Check this out!
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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And speaking of International Womens Day, here are just a few of
the womens agricultural projects around the world that weve
supported recently.
In fact, were so devoted to reducing local & global hunger
and empowering communities for nutritious futures, that we make our
charitable contributions based on Net Sales: Thats our revenue
BEFORE we consider our cost of goods. So if the price of our
ingredients rises, were still contributing the same amount. Most
times, that amounts to less margin for us. But hey, all of us have
a shared obligation to be good people in this world and to share
the resources that were so blessed to have. So we choose to be
caring, sharing people first, before all else.
Oh, and about the trademark issue you mentioned in your previous
correspondence
Please note that we at Naked Granola (TEAM AWESOME) are very
careful in matters relating to intellectual property and would not
knowingly adopt a mark that is likely to cause confusion in the
marketplace. Consequently, serious consideration has been given to
the allegations in your Feb 23, 2015 letter. After having done so,
however, we are thoroughly convinced that our use of Naked Granola
does not infringe on your clients trademark rights.
Furthermore, TEAM AWESOME denies each and every allegation set
forth in your Feb 23, 2015 Cease & Desist letter. TEAM AWESOME
asserts that the Naked Granola mark as filed with the USPTO
#86/513,081 (NAKED GRANOLA) is distinctive, does not infringe upon
the GRUMPY BEAR marks enumerated in your previous correspondence
(BEAR NAKED), and that there is no evidence or expectation of
confusion in the marketplace. TEAM AWESOME also asserts that our
use of NakedGranola.com is in good faith, legitimate, and does not
constitute cybersquatting.
The reasons for these assertions are quite numerous (and we aim
to minimize the amount of paper utilized by our business
correspondences) so we will only discuss a few.
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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CyberSquatting
TEAM AWESOMEs use of the NakedGranola.com domain name does not
constitute cybersquatting as set forth in the Anticybersquatting
Consumer Protection Act. With regards to these allegations, we have
consulted with well-known expert advisors on internet matters, Mr.
Google & Mrs. Siri. TEAM AWESOME asserts that the use of
NakedGranola.com is in good faith since it: utilizes our legitimate
mark, does not infringe upon the marks of GRUMPY BEAR, does not
divert or mislead customers, and we have no history or present
intention of selling the transfer of this domain to any party,
including GRUMPY BEAR, since this domain is used to sell products
for our legitimate, commercial business.
Furthermore, there is no evidence that the designation Naked
Granola has value to GRUMPY BEAR or supports the BEAR NAKED
trademarks. NakedGranola.com was registered many years after the
founding of GRUMPY BEAR and the establishment/registration of the
BEAR NAKED marks. It can be expected that a company with the size
& resources as GRUMPY BEAR would register all domain names
related to their registered marks. If the phrase Naked Granola is
valuable and associated with the BEAR NAKED marks, were puzzled as
to why, at the negligible cost of $11.95 per year, GRUMPY BEAR did
not register the domain name. Its a much more cost effective
solution than drafting and sending Cease & Desist letters. (Can
you believe that stamps cost $.48 these days?)
Further furthermore, the website BearNakedGranola.com, which is
NOT registered or operated by GRUMPY BEAR, is likely very confusing
to consumers, since it contains the entire BEAR NAKED word mark
plus product category name. The continued existence of this website
casts doubt on the claim that the term granola is an associated
part of GRUMPY BEARs BEAR NAKED marks in any way.
But, because we (GRUMPY BEAR & TEAM AWESOME) are friendly
competitors in the marketplace, we would be happy to assist you in
drafting a letter to the owners of BearNakedGranola.com, if you
desire complete with well-designed images and carefully selected,
professional typefaces.
(We highly recommend Comic Sans 12 point for all important,
legal correspondences)
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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Similarity of Mark
TEAM AWESOMEs mark is not similar to GRUMPY BEARs BEAR NAKED
marks and will not cause customer confusion. In your previous
letter, you claim that our use of Naked Granola is likely to cause
confusion in the marketplace with [GRUMPY BEAR]s well-known BEAR
NAKED trademarks.
TEAM AWESOME takes this allegation very seriously and does
understand the importance of a thorough investigation into the
possibility of consumer confusion. We have found that that there is
little possibility that consumers would be confused into believing
that there is any connection, endorsement, or association between
the products made by GRUMPY BEAR & TEAM AWESOME.
The trade dress and overall look & feel of the respective
products and packaging are quite dissimilar, very different, in
fact. The color combinations, name placement, product naming style,
art, materials, and almost every other aspect are clearly
distinguishable.
and given the sophisticated nature of the target audience (have
you ever met a granola customer who didnt read the back of the
package?), it is inconceivable that there would be confusion
between the products made by GRUMPY BEAR & TEAM AWESOME.
(Legal Banter Aside: We advise against performing a Google Image
search for Bear Naked. This phrase seems to have taken on a
second-secondary meaning. And were mildly traumatized.)
Please refer to Figure A. below, presenting side-by-side images
of a sample product (with marks) for both GRUMPY BEAR & TEAM
AWESOME. These two products were selected because they are
comparable.
(We define comparable in this instance as: they both contain the
color blue, and granola)
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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At first glance, there does not appear to be significant
similarities to warrant the allegation of infringement based on
likely consumer confusion.
But upon further review, there does not appear to be significant
similarities to warrant the allegation of infringement based on
likely consumer confusion.
Due to the expense, reputation, and importance of TEAM AWESOME
& GRUMPY BEARs products, a consumer will take great care in
selecting an item for purchase. Through this great care when making
a purchasing decision, consumers will be less likely to be
confused. (Not that theres even the merest expectation of confusion
in the first place but these letters are supposed to contain
statements such as that.)
As part of our commitment to disproving these allegations, we
speculate on the possibility that there may be moments when
consumers exhibit less consumer care than usual. For example: From
time to time, granola-purchasing customers may occasionally forget
to wear their glasses while in the granola section of the
supermarket.
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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Please refer to Figure B, below, simulating a scenario in which
a customer (familiar with the appearance and commercial impression
of GRUMPY BEARs marks) has forgotten to wear his/her glasses.
(Please note that this is a simulated image only. We do not
gather or retain data about the un-corrected eyesight of our
customers)
Again, there is no reason to expect consumer confusion.
Furthermore, our sales data indicates that a non-zero quantity
of granola is sometimes sold during overnight hours. Please refer
to Figure C, below.
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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In this scenario, this is great reason to be concerned about the
overall disorientation and wellness of the customer, but still no
expected confusion based on appearance of marks or products.
While weve demonstrated the implausibility of confusion of the
TEAM AWESOME mark and the GRUMPY BEAR marks, it may be useful, for
contrast, to examine what would clearly constitute intentional, bad
faith similarities. Let us examine two (2) designs that would
certainly be a cause for concern.
(These products are completely fictitious, and for educational
purposes only.)
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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Confusingly Similar Mockup #1
There are many elements within that this design that are
confusingly similar to the BEAR NAKED marks. Bringing a product
like this to market would be in bad faith, as the intention would
likely be to mislead customers.
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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Confusingly Similar Mockup #2
This design is, beyond any doubt, confusingly similar to GRUMPY
BEARs BEAR NAKED marks. The bad faith infringement extends beyond
the word mark and to many of the design characteristics detailed in
the several of the BEAR NAKED trademark registrations.
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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Evidence of Confusion
There is no actual evidence that TEAM AWESOMEs mark causes
customer confusion, with customers erroneously mistaking it for the
GRUMPY BEAR marks, or as affiliated and/or sponsored by GRUMPY
BEAR.
As part of a routine intellectual property review, in early 2015
TEAM AWESOME commissioned an externally conducted research study to
investigate the likelihood of confusion in the marketplace caused
by the TEAM AWESOME mark & branding. The study follows the
Eveready format, which was established in 1976 Union Carbide Corp.
v. Ever-Ready, Inc. and has been approved countless times since.
The study presented TEAM AWESOMEs products as the junior mark, to
investigate whether consumers exposed to the NAKED GRANOLA mark are
likely to be reminded of any existing strong senior marks.
The study was conducted in a randomized, double-blind format,
with controls to account for noise. The survey was administered to
pre-screened participants within the relevant universe.
Participants were randomized and divided into 4 groups - one for
each NAKED GRANOLA product variant. Each group was then further
divided in half, providing a treatment & control cell for each
product variant, for an overall cell count of 8. N = 400.
When analyzed, the resulting data shows conclusively that there
is no evidence of actual confusion in the marketplace.
Please see Figure D, below.
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM
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We do, however, wish to comment on demand #2 from your previous
letter which states:
2) Acknowledge [GRUMPY BEAR]s exclusive right to use and
register the BEAR NAKED Marks in the United States for granola,
cereals, and any related goods.
Dear GRUMPY BEAR, Go for it! Were not trying to stop you! You
dont need to ask us for validation. We acknowledge your rights of
use and registration! Enjoy! But all of the aforementioned
arguments indicate that our marks are distinct. Were moving apart.
But we can still be friends.
Seriously though, thanks again for your letter. We really do
appreciate hearing from Naked Granola fans across the nation! And I
always truly appreciate the opportunity to spend my nights and
weekends away from my family, in front of a computer, so I can
respond to letters like this.
Sincerely yours,
Mark Agrusti Creative Director / Chief Letter-Writing
Officer
NAKED GRANOLA, LLC | 1-800-530-1712 | [email protected] |
NAKEDGRANOLA.COM