Skippy v. Skippy: The Great Peanut Butter Trademark Wars

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According to the National Peanut Board, March is not only NaSkippy hates with linetional Peanut Month, but it contains National Peanut Butter Lover’s Day and National Peanut Cluster Day. That makes March a good time to remember one of the longest running battles in trademark law history, a dispute that began when the second Roosevelt was President and ended when the second Bush was President. It was all about peanut butter.

Crosby’s Skippy

In 1923, Percy L. Crosby created a comic strip for Life Magazine called Skippy, featuring a feisty urban-dwelling youngs1931 Skippy Candy Bar ter who liked to paint fences. Although now a cultural footnote, Skippy was an inspiration for Charles Schulz’s Peanuts and was once nearly as famous.  Skippy was syndicated nationally for two decades, appeared on a Wheaties box and a U.S. postage stamp, and was made into a 1931 Academy Award-winning film.

Crosby became very wealthy. Doing business as Skippy, Inc., he registered Skippy as a trademark in 1925, and then licensed the mark for branded toys, games, trading cards, candy bars, school supplies, clothing and even Skippy-brand bread.

But not peanut butter.

Rosefield and the Birth of Commercial Peanut Butter

So how did we get Skippy peanut butter?  The mass commercial distribution of peanut butter began in earnest in 1922, when California businessman Joseph L. Rosefield developed a hydrogenation method to prevent the peanut oil from separating from the other ingredients. Rosefield licensed the hydrogenation process to the Chicago manufaSkippy Fencecturers of the Peter Pan brand and also sold his own “Luncheon Brand” peanut butter in California.

But in 1932, Rosefield decided to change his brand name to “Skippy.”  This decision came right on the heels of the Skippy comic strip’s Hollywood success and, given the packaging Rosefield decided to use, one is hard-pressed to call it a coincidence.  Rosefield’s packaging employed faux-paint brush lettering reminiscent of Crosby’s, and included a slatted fence and paint bucket strikingly similar to the comic strip’s well-known mise en scène. Would this have been likely to confuse? Even today, Wikipedia incorrectly lists peanut butter as among the official Skippy comic licensed products.

Skippy v. Rosefield

In 1933, Rosefield attempted to register the Skippy mark for peanut butter and Crosby successfully opposed the registration. However, Rosefield nevertheless kept using the mark to sell peanut butter, along with the fence and paint bucket packaging.

Why did Crosby never sue?  Perhaps it was because Rosefield’s peanut butter was marketed primarily in California, far away from Crosby’s New York home. Or perhaps it was because Crosby himself became increasingly pre-occupied with anti-Roosevelt politics, self-published books about communism, and what some claim were retaliatory investigations and audits by the FBI and IRS.

As Crosby’s political eng1937 anti-Roosevelt cartoon by Crosbyagement increased, his readership declined. Both his newspaper syndication contract and his federal trademark registration expired by 1945. In 1947, Crosby was involuntary institutionalized after an alleged suicide attempt, never again to emerge until his death two decades later. That same year, Rosefield finally was able to register the Skippy peanut butter mark without opposition under the newly passed Lanham Act.

Skippy v. CPC

Control of Skippy, Inc. eventually passed to Percy Crosby’s daughter and heir, Joan Crosby Tibbetts, who continued to publish collections of old Skippy cartoons and arranged a limited number of merchandising deals. Meanwhile, ownership of the Skippy peanut butter brand was transferred from Rosefield to CPC International, Inc. In 1977, Crosby Tibbetts and CPC negotiated a co-existence agreement which, among other things, released CPC from liability for trademark infringement. The following year, Crosby Tibbetts re-registered the Skippy mark for cartoons without opposition from CPC. But this peace was short-lived.

In 1980, Crosby Tibbets sued CPC for trademark infringement in the Eastern District of Virginia.  The court issued judgment for CPC on the grounds of estoppel and laches, but also held that the comic strip and peanut butter were very different goods that were unlikely to be confused, especially since, by that time, the peanut butter packaging no longer contained the fence and paint bucket motif. The Fourth Circuit affirmed and the Supreme Court denied certiorari.

CPC v. Skippy

CPC may have thought that ended the matter, but Crosby Tibbets was just getting started. She wrote letters to federal agencies and elected officials accusing CPC of a Skippy Inc.'s enjoined snack foodcriminal conspiracy. She sued CPC’s lawyers in state court. She also told CPC that if it did not pay her a seven-figure licensing fee, she would enter the food market. CPC rejected these demands.

True to her word, in 1985 Crosby Tibbetts licensed her father’s character for a Skippy-brand caramel popcorn and peanut snack.  CPC quickly returned to the Eastern District of Virginia and, in 1986, that court found that the new product was likely to be confused with the Skippy peanut butter brand. The court enjoined Crosby Tibbets from selling Skippy-branded food products and from telling others that she had the right to merchandise Skippy-branded food products.

Skippy’s Revenge

The dispute submerged for over a decade until the internet came along to get it going again.  During the domain name gold rush of the 1990’s, a vigilant Crosby Tibbets somehow beat CPC to the punch and registered Skippy.com in 1997.

In 1998, Crosby Tibbetts’ website went live with an all-out attack on CPC and others. It featured commentary on CPC’s “theft,” “fraud on the courts” and “life magazine with linepiracy,” crimes that were allegedly aided by what her father had referred to as President Roosevelt’s “NRA [New Russian Administration] peanut butter code.”  Particular venom was reserved for the now-defunct law firm of Lord Day & Lord, which represented Crosby in the 1930’s during his successful trademark opposition but then switched sides to represent CPC in the 70’s and 80’s. The site also contained a “legal notice” defiantly claiming ownership of the Skippy mark.

CPC marched back to court and argued that Crosby Tibbetts was in contempt of the earlier injunction, which prohibited her from claiming to have the right to license Skippy-branded food products. The District Court agreed and ordered that references to CPC and the lawsuits be removed from the site, including even a Life Magazine cartoon with the caption “Why is [CPC] bullying little Skippy once again?”  However, in 2000, the Fourth Circuit reversed, holding that the entire website was non-commercial speech protected by the First Amendment. The content was fully restored and most of it is still up today, an electronic finger planted firmly in the eye of Skippy’s perceived malefactors.

I Hope She Drowns in a Giant Vat of Peanut Butter

But even the stickiest trademark dispute has to get unstuck sometime. In 2002, CrosbyTibbetts played her final card and petitioned for cancellation of the Skippy peanut butter mark. The basis of the claim was the alleged discovery of new evidence demonstrating that Rosefield had obtained his 1947 Skippy peanut butter registration by fraud.  But the TTAB and District Court found that the evidence was not new and that the claim was barred by res judicata.  The Fourth Circuit affirmed and, on April 5, 2004, the Supreme Court denied Crosby Tibbetts’ petition for certioriari.

That same day, an Associated Press article declared that the Skippy lawsuits were finally over. Crosby Tibbetts, then 71, was bloodied but unbowed.  She vowed to continue her crusade in the court of public opinion and is still defiant of her critics, one of whom expressed her wish that Crosby Tibbetts "drowns in a giant vat of peanut butter." Ten years later, in 2014, Crosby Tibbetts is still advocating for enforcement of her father’s rights and, of course, a Skippy peanut butter boycott. As the animated cartoon on Crosby Tibbets’ website proudly touts to this day: “Skippy Hates Peenut Butter.”

 

Topics:  Trademark Litigation, Trademarks

Published In: Civil Procedure Updates, Communications & Media Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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