The Soft Underbelly of Turtles Candy: Is the U.S. Trademark at Risk of Genericide?

more+
less-
more+
less-

It has been a while since we’ve added another page to the Genericide Watch, so a little trip to Candyland, the Twin Cities’ local iconic and old fashioned candy shop, didn’t disappoint:

I suppose that Candyland’s ”Mock Turtles” sign is meant to communicate that it isn’t actually selling authentic Turtles brand pecan/caramel/chocolate candy from DeMet’s Candy Company. But, what does that imply about the Cashew Turtles, Pecan Turtles, and Mega Pecan Turtles on the right?

DeMet’s apparently purchased the U.S. brand and trademark in 2007 from Nestle, and Nestle appears to have retained the trademark rights elsewhere. This is a great example of the divisible and territorial nature of trademark rights. Here is a link to the USPTO records for the incontestable federal trademark registration for TURTLES.

So, how incontestable are the TURTLES trademark rights in the U.S. anyway? Genericness is still a soft underbelly for a federally registered trademark that has achieved incontestable status, and if such a challenge is successful, the trademark is no longer proprietary — it loses all exclusivity and becomes part of the public domain for anyone to use, including direct competitors.

The photos above are somewhat trademark validating for DeMet’s maintenance of exclusive rights in the TURTLES trademark – the one on the left especially (because it seems to acknowledge the candy is an imitation, not the real deal). Yet, unfortunately for DeMet’s there certainly seems to be no shortage of generic references to TURTLES as a type of candy, as opposed to a brand of candy (for example, many recipes here and here, and candy for sale here, here, here, here, here, and here.

And, how difficult do you suspect it will it be for DeMet’s to clean up this mess with this little gem lingering on it’s website FAQ page:

Q. What are TURTLES®? A. TURTLES® are chocolate confections that are shaped like Turtles. They consist of milk chocolate, caramel and some variety of nuts.”

Well, some things are better left unsaid (or, at least better-said), especially by the trademark owner. So, what do you think, is the TURTLES trademark at risk of degenerating into a generic term for a type of pecan/caramel/chocolate candy? Or, despite its reluctance for speed, has this turtle already crossed the finish line?

Last, any predictions on the fate of this recently filed “Sea Turtles” trademark application filed by an individual in Wilmington, North Carolina, for candy?

Topics:  Brand, Generic, Trademarks, USPTO

Published In: Administrative Agency 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.

© Winthrop & Weinstine, P.A. | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »