The Great Dirty Soda War In Utah Is Trademark Gone Stupid

from the ever-heard-of-a-dirty-martini? dept

Thu, Dec 10th 2015 12:02am — Timothy Geigner

On matters of trademark, a law I hate much less than other forms of intellectual property, I tend to think of its administration as needing to be built on a basis of trust. The purpose of trademarks are chiefly to benefit the public, in that they are designed to keep the consumer from being fooled into thinking one brand is another. With that in mind, the USPTO has the power to grant exclusivity to certain brand identifiers in order to help the public consumer identify brands and companies. For this arrangement to work, the USPTO must be trusted not to screw it all up by granting marks on common terms or by limiting customer options by being too exclusive and stifling business.

The damage done when the USPTO fails at this can be seen easily, but perhaps no better example exists than what's going on in Utah at the moment, where several soda shops are engaged in a battle over the word "dirty." The New York Times calls it the Soda War of 2015 and it's primarily being waged by two businesses, Sodalicious and Swig. Because of Utah's Mormon population, which tends to eschew alcohol and coffee, but will readily imbibe sugar, shops selling so-called "dirty-soda" are becoming quite popular. Dirty-soda is a term for cocktails of common soda products along with taste enhancers, such as syrup or other ingredients. Anyone who has ever ordered a dirty martini will be familiar with the term and its common use in making cocktails. But for some reason the USPTO granted a trademark to one of the businesses on the use of the term "dirty" for their drinks and you already know what happens because of it.

As the shops have proliferated, a fight has broken out between Sodalicious and Swig, two of the larger chains, over the use of the word “dirty.” Nicole and Todd Tanner, who started Swig in 2010, say they own the right to use the word to refer to flavor-infused drinks — they trademarked the idea in 2013 — and they are suing Sodalicious for taking their idea.

Sodalicious, which opened three years after Swig, responded to the lawsuit by saying that “dirty” had been used to refer to flavor-added drinks long before Swig employed it, and that the trademark should be canceled. Lawyers pointed to the dirty martini as evidence that Swig did not own the idea.

Lawyers are involved in Utah over the use of the word "dirty" being trademarked and locked up for the purposes of making drinks. If that isn't a clear example of the trademark office's inability to properly assign unique identifiers, then I can't imagine what is. As the article notes, there is no issue here of customer confusion. The fans of both companies are lining up on social media circles to vehemently defend their preferred brand. Everyone knows who's who in this game. Yet, there's a legal battle, all because a common term was trademarked.

It should be noted that the use of "dirty" isn't the only contention in Swig's lawsuit, which also accuses Sodalicious of using bubbles in its logo and serving cold cookies with pink frosting, because that's apparently something worth a lawsuit nowadays. Still, without the trademark on the word "dirty", the suit likely doesn't happen.

“It’s turning people against Swig,” she said of the lawsuit. “Which is a shame, honestly, because they’re trying to do business, and I’m sure they’re very nice people.”

But five minutes down the road, at a Swig shop surrounded by its own circle of minivans, a shift leader, Bronwyn Varner, 18, insisted that her customers were as loyal as ever — and that Swig would win the legal battle.

Fantastic, except its all that brand loyalty, completely lacking in any consumer confusion, that is the very reason why no lawsuit, and no trademark on the word "dirty", should ever have happened in the first place.

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Filed Under: dirty soda, trademark, utah
Companies: sodalicious, swig

20 Comments

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Lawrence D’Oliveiro, 10 Dec 2015 @ 12:06am

Re: readily imbibe sugar
Obesity, much?
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Anonymous Coward, 10 Dec 2015 @ 12:25am

Re: Re: readily imbibe sugar
the lawyers need to feed on something.
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Bill Jackson (profile), 10 Dec 2015 @ 4:09am

More marks possible
Filthy, Feelthy, grubby, nasty, the list is endless....
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Anonymous Coward, 10 Dec 2015 @ 4:57am

Dirty Word Alert!
Wait, doesn't the USPTO refuse or cancel trademarks for "dirty" words?
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cpt kangarooski, 10 Dec 2015 @ 5:58am

Well, while it sounds as though the mark is generic or merely descriptive for a type of soda, I don't think that it's reasonable to expect PTO examiners to be omniscient. I had no idea that dirty soda was even a thing before reading this article, much less that it was a common thing. Not knowing this, I might have granted the registration for the mark were I the examiner.

While it would be great to shore up the examination process, perhaps by the PTO hiring some additional, geographically distributed staff to serve as local knowledge experts, and also to allow examiners more time per mark, I think the main solution would simply be to not grant incontestable status to marks, and to grant attorney's fees and costs to the prevailing party in trademark litigation (as opposed to now, where only the trademark holder is eligible to recover them) when it is just to award them. Motivated third parties are often going to do a better job of policing bad marks than the PTO is able to do.
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sam1am (profile), 10 Dec 2015 @ 6:43am

This isn't going to matter much in six months when both of these places are out of business.

I passed a Sodalicious the other day and thought it must be a food place with a terrible name, but no - it's actually a whole big shop selling nothing but soda.
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Anonymous Coward, 10 Dec 2015 @ 7:12am

Re:
But in this case "dirty" is simply a generic description of a particular TYPE of soda, not a particular BRAND of soda.

Think "Cola"
Its a type of beverage not a brand.

We have:
Pepsi Cola
Big Red Cola
Coke Cola
etc

"root beer" is also a descriptive word and used by many brands.

Granting trademark on the word "cola" makes no sense, it is just a descriptive word not a brand name.
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Mason Wheeler (profile), 10 Dec 2015 @ 7:22am

Re: Re: readily imbibe sugar
"Readily" in this context means "about as readily as any other US sub-population." My brother lives out that way, and I've never noticed any higher propensity towards obesity among locals when I've gone out to visit him.
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cpt kangarooski, 10 Dec 2015 @ 7:29am

Re: Re:
You're right, but my point was that the examiner pretty certainly didn't know this and didn't find out about it during examination. As I said, I've never heard of that before this article, and so I can easily see how it might sound like an arbitrary mark for soda.

While this is the reason that marks are published before they're registered and why there's an opposition process, I think we ought to play it safe and allow for more vigorous attacks later on, too, just in case of marks slipping through when they shouldn't.
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Anonymous Coward, 10 Dec 2015 @ 8:10am

Re: Re:
@AC 0712

The word "cola" is not a trademark but your good examples are. The trademark applies to the entire phrase in each case, not a single word.

The case written about appears to be using the word "dirty" not as part of a brand name or phrase, but as a descriptor. This is a case where USPTO should be slapped upside the head for even considering the application, let alone granting it.

And what about other businesses that actually use the word "dirty" in their name? I came across a strip club in Phoenix that called itself "Dirty's".
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Anonymous Coward, 10 Dec 2015 @ 8:17am

I read through the NYT article, and I think I know what this case is really about. Here's a couple of quotes:

“We started seeing some of the knockoffs or whatever you want to call them — ‘competitors,’” Ms. Tanner, 44, said in an interview. “We’re just trying to protect our brand.”

“Defendant is nothing more than a copy of Swig’s exact business model,” the document states. It adds that the “defendant’s actions demonstrate an intentional, willful and malicious intent to infringe Swig’s federally registered Dirty mark to Swig’s great and irreparable injury.”

This isn't about trademark infringement. Swig doesn't like that it has competition now. Trademark is just the tool that Swig is using to try to stomp it out.
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Mason Wheeler (profile), 10 Dec 2015 @ 8:21am

Re:
They're hardly the first to do so.
Competition is a sin."
- John D. Rockefeller
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Anonymous Coward, 10 Dec 2015 @ 9:08am

They are probably turning against swig for being so petty minded
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Anonymous Coward, 10 Dec 2015 @ 10:54am

Re: Or the USPTO could learn to use GOOGLE...
Search Results

To make a drink “dirty,” means you may slightly change the color and taste by adding or changing some of the essential ingredients. A dirty martini for instance contains olive juice. There are actually several versions of the dirty mojito.May 31, 2011

Not like there is "prior art" or anything readily available for anyone with enough brain cells to connect the dots from their application to a basic search engine (I haven't confirmed, but I would guess that even Yahoo or webcrawler, if it still exists, would be able to find the same information, but apparently our trademark agents are not allowed to use the internet during work hours...
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Anonymous Coward, 10 Dec 2015 @ 11:06am

Mixin' my own dirty drink at the gas station
I stopped going to swig when they got all intangible ownership crazy especially since in the past they've used other companies legitimate marks.
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ysth (profile), 10 Dec 2015 @ 12:36pm

"trademarked the idea"
they trademarked the idea in 2013 — and they are suing Sodalicious for taking their idea

Surprised you aren't calling out the article author for thinking you can trademark ideas. Maybe you think it's a lost cause?
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Fred the Fourth, 10 Dec 2015 @ 1:54pm

Re: Re: Re:
OK, but less than 10 seconds of googling yielded pages from at least as far back as 2011 defining and describing the use of "dirty" for drinks. I don't expect PTO examiners to know everything, but I do expect them to do SOME work.
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Andrew D. Todd, 10 Dec 2015 @ 6:27pm

The Concept of Dirty
Well, I don't know if this is relevant, but there's such a thing as "dirty rice," a Southern Anglo term for what a Mexican would call Arroz con Pollo, or a middle-easterner would call Pilaf. What it works out to is rice made with chicken soup.

There's a reference in a James Lee Burke novel, _Dixie City Jam_ (1994).
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Anonymous Coward, 11 Dec 2015 @ 5:20am

Re: Re:
Think "Cola"
Its a type of beverage not a brand.

Not originally.
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techinabox (profile), 11 Dec 2015 @ 10:09am

Re: The Concept of Dirty
Dirty Chips is a brand of potato of chips that does weird flavors like BBQ Cheddar Sour Creme and Onion Sea Salt and Vinegar. Been around for a while.
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