No Likelihood of Confusion Between Kids’ ‘Yummi Bears,’ ‘Yummy Gummy’ Vitamins
By Tamlin H. Bason
Finding the registered “Yummi Bears” mark for children’s vitamins weak, and that mark and the “Yummy Gummy” mark dissimilar, the U.S. District Court for the Central District of California on Aug. 16 ruled against Yummi Bears’ manufacturer in a trademark infringement lawsuit (Hero Nutritionals LLC v. Nutraceutical Corp., C.D. Cal., No. 8:11-cv-01195-AG-MLG, 8/16/13).
The first word in the plaintiff’s Yummi Bear mark “is descriptive of the good-tasting nature of the product,” the court held, finding the mark conceptually weak. Moreover, in addition to the two parties in suit, numerous third parties sell children’s vitamins in gummy bear form. Accordingly, the defendant’s use of its house mark in selling its Yummy Gummy products makes the marks dissimilar, and thus there is no likelihood of confusion, the court ruled.
Yummi Marks Registered For Children’s Vitamins
Hero Nutritionals LLC owns a federal registration for its Yummi mark and for its Yummi Bears mark. Both marks are for used for Hero’s bear-shaped gummy vitamins.
In 2009, Nutraceutical Corp. began selling a gummy version of its Kal Dinosaur line of children’s vitamins. The Kal Dinosaur line includes such branded products as Vitamin C-Rex and Multi-Saurus. The packaging for those vitamins includes the term “Yummy Gummy,” which appears below the name of the vitamin.
Hero sued Nutraceutical for trademark infringement alleging that its Kal Dinosaur line of vitamins would cause confusion with Hero’s Yummi Gummy vitamins.
Mark is Conceptually Weak
The court looked to the likelihood of confusion factors set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 U.S.P.Q. 808 (9th Cir. 1979) to determine whether the Kal Dinosaur vitamins were infringing.
The first factor, which assesses the strength of the plaintiff’s mark, weighs against a finding of infringement, Judge Andrew J. Guilford said. The Yummi Bears are commercially successful, but the marks “are conceptually weak, as it takes little to no imagination to understand the significance of the reference,” the court said. In addition, the numerous third party uses of similar marks makes the Yummi marks weak and entitled to limited protection, the court concluded.
The court agreed with Hero that the second factor, which assessed the proximity of the goods, weighed in favor of finding a likelihood of confusion.
Marks Pronounced The Same But Are Different
However, the third factor, which examines whether the marks are similar “weighs strongly against a likelihood of confusion,” the court concluded. Yes, “Yummy” and “Yummi” are similar when pronounced, “But the words are colored, spelled, and capitalized differently,” the court noted.
Additionally, the two terms are both only used in connection with “their respective HERO and KAL house logos, which are not similar and serve to further distinguish the marks and products, making confusion even less likely,” the court said. The court concluded:
[W]hile the words “yummy” and “yummi,” standing alone, are similar in sight, sound, and meaning, the dissimilarities in the designs, themes, layouts, and respective house marks between the two product labels renders the marks dissimilar and easily distinguishable.
The remaining factors also weighed against a finding of confusion, the court concluded. In so finding, the court was critical of Hero’s failure to proffer any reliable evidence of actual consumer confusion given that the marks had been used concurrently for more than three years. The court thus found in favor of Nutraceutical.
Hero was represented by Jeffrey K. Joyner of Greenberg Traurig, Los Angeles. Neutraceutical was represented by Richard T. Jackson of Holland and Hart, Salt Lake City.