Trademark Fluff over Fluffernutters

Originally posted 2011-06-24 13:17:57. Republished by Blog Post Promoter

Fluffernutter

Reports a Lynn, Massachusetts newspaper:

A Lynn company known worldwide for its Marshmallow Fluff is suing Williams-Sonoma, Inc., claiming the culinary retailer is misusing the registered trademark, Fluffernutter.

I just made one of my sons a Fluffernutter tonight. You know — a Fluffernutter, which the good people at Durkee-Mower, Inc., the Marshmallow Fluff company, describe as “a wonderful concoction of Marshmallow Fluff and peanut butter in a delightfully tasty sandwich.” Legal experts agree on this definition. You might call that an odd coincidence, except that it’s almost all Avrumy eats. But I certainly didn’t know Fluffernutter (I mean FLUFFERNUTTER®) was a registered trademark.  It’s not surprising — instincitvely it seems as if it should be — and yet, and yet …

Why doesn’t the Fluffernutter page of the Marshmallow Fluff website show the circle-R emblem designating a registered trademark in FLUFFERNUTTER?  [Update:  Four years after I first posted this, it still doesn’t!]  What they do show is shown above — no circle-R. There is no notice of registraton or any other trademark rights in the mark FLUFFERNUTTER anywhere on the page, and if it is somewhere else on the site, I couldn’t find it. An odd way to protect a registered trademark.

More oddness: The word FLUFFERNUTTER is indeed registered; serial number 75175400. FLUFFERNUTTER was not registered until 1998, strange but not shocking to those of us who remember the Fluffernutter jingle (you can hear it by clicking on the Fluffernutter home page) from our own childhoods. But what’s more odd is that the registration doesn’t protect Fluffernutters! No, the goods and services listed in the registration are “printed recipes sold as a component of food packaging and cookbooks.”

Is that what I gave my little Avrumy for dinner? A printed recipe? I don’t think so! (There’s also a pending registration for … ice cream! I certainly didn’t give Avrumy ice cream for supper!)

Yes, theoretically speaking, at least, Durkee-Mower, Inc. has a problem, for as one of my other boys, Yisroel Asher, said as he saw me write this entry, “Can a name of a sandwich be a trademark?” Indeed, can it?

In fact, FLUFFERNUTTER appears to be a generic term describing a sandwich made with delicious Marshmallow Fluff — which is trademark protected, and whose makers evidently coined the word — and peanut butter. Indeed, Durkee-Mower does not sell Fluffernutters. You make them yourself with delilcious Marshmallow Fluff! So how can the company claim trademark infringement?

Think trademark dilution. The gift from Congress, wrapped by the courts (if temporarily lost in the parcel post by the Supreme Court) that keeps on giving. Or in this case, taking — taking a word right out of the English language and making someone liable under federal law for using it fairly, descriptively, accurately, non-confusingly, in favor of someone who files a federal trademark innacurately, confusingly and in a completely phony manner, to describe goods and services contrary to the manner in which the applicant itself uses the mark on its own website!

Will the court bite?

Other links on this story: Blogger Paul Harris reminisces about Fluffernutters [link is gone, not archived — RDC]; Bostonist gives some great background on the product.

UPDATE: This is almost certainly academic. It’s hard to see why Williams-Sonoma would fight this, notwithstanding that it’s winnable. How important can FLUFFERNUTTER be to a cooking equipment company? Don’t expect to hear about a decision — my guess is that the two sides will probably negotiate a walkaway.

UPDATED EVEN MORE:  Yep, PACER reports that case was settled in August of 2006.  “Terms not disclosed.”

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Author:Ron Coleman

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