Trademark Bullying Works: Dawa Food Mart Agrees To Name Change After Trademark Suit From Wawa

from the why-they-do-it dept

You may recall that earlier this year, mid-sized convenience store company Wawa filed a trademark suit against the Dawa Food Mart, a single location food market in New Jersey. At the time, we pointed out several problems with the lawsuit, including the stature of the companies being vastly different, the offerings of the companies not being particularly identical, and the fact that it was clear that the Korean owner of Dawa was not attempting to trade on Wawa's name (Dawa means "welcome" in his language). What all of this amounted to was pretty clearly a low likelihood of any actual confusion in the marketplace, which was nearly admitted to when Wawa's reps excused the legal action away as obligated under trademark law, despite that not being actually true.

But, as we keep pointing out, trademark bullying like this works, and now Dawa Food Mart has agreed to change its name in exchange for Wawa not seeking damages against it.

The proposed order, which includes a permanent injunction barring the use of the Dawa name, has been submitted for the approval of U.S. District Judge Katherine Hayden in Newark. Dawa would have to change its name within 90 days of court approval. The store by that time also would have to use or destroy all materials with the Dawa name.

Under the proposed agreement, Wawa would drop demands that Dawa be required to pay compensatory damages, as well as Wawa’s legal expenses and attorneys’ fees. Dawa would be obligated to pay $12,000 to Wawa if it’s found to have violated the proposed agreement.

There's some irony here in the Korean owner being forced to cease using a word that means "welcome" for his business, all because a bigger corporate entity threatened him with compensatory damages. Irony aside, this is unfortunate, not the least because of the expense Dawa will take on in changing its name, signage, branding, etc., but also because of the time sink this surely was for him. Still, this kind of bullying works because the potential damages outweighed the already sunk costs for Dawa.

It's worth repeating the trademark law was designed to benefit the public. Given the lack of real confusion between the two businesses, I'm going to need some help seeing where the beneficiary of this trademark action is the public and not Wawa corporate interests.

Filed Under: trademark
Companies: dawa, wawa

Wawa Versus Dawa: Trademark Dispute Blamed On A Need To Police That Doesn't Exist

from the wawa? dept

We've made the point before. In the pantheon of trademark disputes, the most commonly trotted out excuse for overt protectionism is nothing but a headfake. While companies often proclaim their bullying actions are a requirement under trademark law's provision for active policing of infringement, the fact is that this requirement does not mandate that companies roadblock any and all similar uses to their marks. Instead, the idea is that trademark holders cannot allow actual infringements to go unchallenged.

For an example of the difference, we can point to the current dispute between two companies in the food mart business, Dawa Food Mart and Wawa Inc. The former is a single store in New Jersey that has operated for two years now. The latter is a mid-sized chain that only recently decided that Dawa infringed on its trademarks.

According to The Courier-Post, Wawa has filed a federal trademark infringement lawsuit against Dawa Food Mart, located at 15 Lafayette Street in Paterson, Passaic County.

The Korean owner of Dawa Food Mart, identified only as Han in the report, explained to the Courier-Post that "Dawa" means "welcome" in his native language. The shop has been open for about two years now.

It's worth noting that Wawa has a long history of policing its trademark to near feverish degrees, having filed suit against tour and gaming companies that use the term "wawa" in their names. At least Dawa Food Mart is more in the marketplace ballpark, though even then we're talking about completely different animals. Add to that the difference in stature and offerings and it's unclear how likely any real confusion could possibly be.

And, since the potential confusion is really the question in trademark actions, you might have expected Wawa to make the claim for it when asked to comment on the suit. But it only did so in a roundabout way, instead seeming to fall back on the old requirement to police excuse.

"Wawa spokeswoman Lori Bruce told the newspaper that the lawsuit is about fulfilling an "obligation to protect consumers from any likelihood of confusion" and protecting "the brand name," symbolized by the Canada goose whose name is a direct translation from the Native American language used in the region."

There are some barriers to Dawa winning out, which mostly amounts to both brands using the color red on signage. Still, it seems silly to soberly worry about any real customer confusion here.

Filed Under: confusion, trademark
Companies: dawa food mart, wawa