Danone offers cold brew coffee under the STOK brand, and one of its flavor variations is promoted with the slogan "BRIGHT & MELLOW," which emphasizes the product's bright and mild character. The company has applied to register this slogan with the United States Patent and Trademark Office and has n using it for some time. Chobani, another major food producer, acquired the La Colombe brand, which also sells ready-to-drink cold brew coffee. Danone claims that after the acquisition, Chobani changed La Colombe's packaging and slogan from "Bright & Flavorful" to "Bright & Mellow," which it alleges is a deliberate imitation of the STOK brand. Chobani has not yet responded to the lawsuit or issued any public statement, but the case itself demonstrates how companies are increasingly actively defending their brands in the competitive beverage market.
In the lawsuit, Danone emphasizes the similarities between the packaging of its STOK brand and the new packaging of La Colombe, suggesting that these are not coincidental. However, the main claims are based on Chobani's use of the slogan "BRIGHT & MELLOW," rather than the packaging's appearance itself. This approach indicates that Danone has more confidence in the protection of its slogan than in the protection of trade dress, which aligns with current law – proving trade dress protection is often more difficult than proving trademark protection. The company's strategy likely also stems from the fact that the application for the slogan's registration had already n approved for publication with the relevant office, so Danone relied on the rights arising from use and the pending application, rather than waiting for full registration.
Two weeks after filing the application, the office withdrew Danone’s application for publication and sent it for further review after receiving a letter of protest. The letter argued that the slogan was merely descriptive, as the words “bright” and “mellow” are often used to describe coffee flavors, and included evidence of their use by other companies. Although the letters of protest are anonymous, it can be assumed that Chobani, after receiving the application, took the opportunity to block Danone’s application without engaging in a longer opposition process. Since the application had not yet n published, Chobani saved time and costs. The office is still analyzing the case, but it is possible that Danone could have avoided the protest by waiting a few months to file the application – at that time, the company could have relied on a registered trademark, rather than just common law rights and a pending application.
The case demonstrates that in disputes concerning the appearance of packaging, trademark rights are often a key element, as they are easier to enforce. However, Danone's decision to initiate legal proceedings based on rights arising from use and the pending application highlights the risks associated with protecting marks that may be considered descriptive. Brand owners should exercise caution, as aggressive actions may draw attention to the weaknesses of the application and encourage rivals to retaliate. As always, the stronger and more unique the mark or appearance, the greater the chances of success in disputes. Companies will be watching the development of this case and the office's decision regarding the slogan "BRIGHT & MELLOW" in order to better plan the protection of their portfolios and enforcement strategies.
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