Perhaps prompted by the release of Oreo’s most recent new flavors, Nabisco has sent a letter to J.P. Licks, one of Boston’s most beloved ice cream companies, asking its owner Vincent Petryk to stop using the word “Oreo” in its Oreo Cookie Dough ice cream and frozen yogurt, according to the Boston Globe. Nabisco’s only proposed alternative, said Petryk, was for J.P. Licks “to become a long-form license-agreement third-party manufacturer.”
But is this the only true alternative? In theory, it depends. Nabisco’s motivations here may stem from the concern that J.P. Licks is unlawfully using the Oreo mark in a way that falsely suggests origin, sponsorship, or endorsement of its frozen treats. This concern is only strengthened given that Nabisco already licenses its OREO mark to grocery retail ice cream brands. Moreover, other ice cream makers have managed to avoid this very predicament by labeling their similarly-flavored ice creams “cookies and cream.” So if J.P. Licks is using the Oreo mark as a mark in light of viable naming alternatives, then sure, it would be infringing upon Nabisco’s famed brand name. But one could argue that what J.P. Licks is doing here is different: it is using the Oreo mark to accurately list Oreo cookies as an ingredient in its Oreo Cookie Dough flavors.
Courts have long confronted the debate as to whether one company may make unauthorized – yet accurate – use of another company’s protected mark. (As an example, the Southern District of New York in 2004 addressed whether the makers of tuna salad should be permitted to print “Made with Bumble Bee Tuna” on its label without permission from the holder of the “Bumble Bee Tuna” trademark.) The courts’ general consensus is that a company may use another’s trademark so long as it is not misleading the public into thinking there is affiliation between it and the mark holder (aside from mere use of the product as an ingredient). Ultimately, then, the outcomes of these types of cases turn on specific facts.
In this instance, it seems as though the battle will end before it starts. For now, at least, in an attempt to avoid future threats or licensee relationships with the mega-brand, J.P. Licks has plans to remove Oreo references from its menu, and has asked its customers to suggest replacement names for the flavor formerly known as Oreo Cookie Dough.