Five Below, Trendy Retailer, Sues 10 Below, Ice Cream Seller, For Trademark Infringement

from the i-give-up dept

When it comes to frivolous trademark lawsuits, you think you've seen it all, but then one comes along that makes you throw up your hands. Here at Techdirt, we understand that the average individual might not know some of the broader nuances of trademark law, such as the focus on customer confusion, or the requirement, in most cases, that the parties reside within the same industry or market. But that understanding goes out the window when we're talking about a lawsuit brought by a large corporation that, like, totally has lawyers and stuff. I use that tone and vernacular specifically as preparation for stating that Five Below, the large retailer with trendy products for less than five bucks, has sued 10 Below, a small chain of ice cream shops.

And before you ask, yes, pretty much all of the media covering this is actually pointing out how divergent the markets and industries of these two companies is, often in spectacularly funny fashion.

One store sells remote-controlled poop, mini-plasma balls, and Mongolian Faux Fur Blankets, all for $5 or less. The other store sells that trendy rolled ice cream.

But Five Below (currently 600 locations) says that 10 Below (five locations, only one in Philly) is violating the discount store's trademarks, and the company has told the rolled ice cream shop to find a new name.

For anyone who has watched trademark proceedings in the past, this is something of a laugher. Claiming that anybody might be confused between the type of things that Five Below sells and an ice cream shop is going to be something of a tough sell in any courtroom. And, once you understand the reason for each company's name, you will quickly realize that this is not the case of 10 Below trying to trade on Five Below's good name. Five Below sells things for five dollars or less, where 10 Below refers to the way the ice cream shops make their product, including dropping the temperature to minus-ten degrees. There's just not synergy between the names here at all. In the filing (below), Five Below makes much of its sales of candy and ice cream at its stores, except that I can't find ice cream listed in this section on its website and the candy referenced is merely other brands being sold there.

And IP attorneys looking through all of this seem to agree.

"It seems to me that you have a very large company pounding its chest and trying to intimidate a smaller company," says Flaster Greenberg intellectual property attorney Jordan LaVine, whose clients include Martha Stewart and The New York Times. "This is a classic example of trademark bullying. It's an unfortunate situation for a smaller company that might not have the money to defend itself."

Plus, 10 Below first opened in New York City in 2015, when Five Below already had a presence there, but Five Below didn't take them to court until more than two years later.

"They should have taken action a lot sooner than the end of 2017," says LaVine.

In other words, this is pretty much ticking off every checkbox for how to lose a trademark bullying lawsuit. It's enough to wonder whether all of this came down to 10 Below opening a location near Five Below's company HQ in Philadelphia and this is all coming from executives that noticed and went on an ego trip. Regardless, this will hopefully be quickly laughed out of court.

Filed Under: consumer confusion, ice cream, novelty store, trademark
Companies: 10 below, 10below, five below