Granny can’t catch a break. In the food and beverage industry, “NANA”-formative trademarks are plentiful. However, the owner of several such marks has overstepped its bounds, asserts Nana Joe’s LLC in its complaint filed earlier this month in the Eastern District of Texas. Nana Joe’s makes vegan and gluten free granola products, and has branded its products with “NANA JOE’S”-formative trademarks since 2012. However, another company, Microbiotic Health Foods Inc. doing business as “Nana’s Cookie Company,” recently accused Nana Joe’s of infringing its own “NANA” registrations and demanded they stop using the word.
Nana Joe’s is having none of it, and asserts that Microbiotic exceeded its “limited alleged trademark rights” in its complaint seeking declaratory relief. The complaint claims that Microbiotic does not have “a monopoly on the word ‘nana,’ a fact evidenced, for example, by the over dozens of different federal trademark registrations or pending registrations that include that word,” and notes that Microbiotic has allowed Nana Joe’s and others’ use of “NANA” without complaint for years. It seeks a declaration that Nana Joe’s use of “NANA” is uninfringing and that Microbiotic’s registrations are invalid and unenforceable. Microbiotic has yet to respond to the suit.
Takeaway: Companies that use common terms such as “Nana” should take care to police their trademark registrations, or else they may lose their rights to other users.