'Any time, any place, any cost' - King's Hawaiian vows to protect trade dress

By Vince Bamford

- Last updated on GMT

(Left to right): King's Hawaiian branding, the former Alpha branding, and Alpha's new look
(Left to right): King's Hawaiian branding, the former Alpha branding, and Alpha's new look

Related tags Trademark

King’s Hawaiian has vowed to continue to “vigorously protect” its brand after last month reaching its third lawsuit settlement over packaging designs.

Alpha Baking Company is this month rolling out new-look blue packaging for its S Rosen’s Sweet Hawaiian Rolls after last month reaching an agreement with King’s Hawaiian, which has sold its Hawaiian sweet rolls in orange packaging since the early 1980s.

The terms of the settlement are confidential, and King’s Hawaiian has voluntarily dismissed the lawsuit it filed in federal court in Georgia in January, in which it alleged Alpha had infringed its trade dress. (Trade dress is defined by the International Trademark Association as: “the overall commercial image (look and feel) of a product that indicates or identifies the source of the product and distinguishes it from those of others​”.)

Alpha Baking Co said it had contested assertions made by the King’s Hawaiian and had entered into the settlement to avoid a lengthy lawsuit, adding it was “choosing instead to continue to focus on its high quality baked products and customer loyalty​”.

The baker said the new branding for its S Rosen’s Sweet Hawaiian Rolls brought to mind "the blue skies and tropical ocean waters of Hawaii​".

We are bakers, and we prefer to spend our time in the mixing room over the courtroom​,” said Alpha Baking president and CEO Lawrence Marcucci. “We have chosen to settle and alter our Hawaiian Roll packaging to avoid litigation that will ultimately be detrimental to both companies​.”

This settlement follows King’s Hawaiian reaching similar agreements with Aldi in January, and with Sprouts Farmer’s Market in April 2015.

We are pleased with the settlement of these cases​,” said King’s Hawaiian executive vice president John Linehan.

Third-largest fresh rolls and buns brand

The business was established in the 1950s in Hilo, Hawaii, and expanded onto the mainland US in 1977 with the opening of a 24,000-square-foot bakery was in Torrance, California. It now operates around 400,000 square feet of baking facilities in California and in Oakwood, Georgia.

It is currently the third-largest brand in the US fresh rolls and buns market, where it is enjoying strong growth, with sales up 17.8% year on year to $387.9m [52w/e December 27 2015].

We have invested a significant amount of time, effort and resources to develop and maintain the image and identity of the King’s Hawaiian brand and it is our intent to vigorously protect our distinctive trade dress at any time, in any place and at any cost​,” added Linehan.

Based in Chicago, Alpha Baking employs more than 1,600 staff and has four production plants – two in Chicago, Illinois, one in La Porte, Indiana, and one in Manitowoc, Wisconsin. It produces brands including S. Rosen’s, Mary Ann, Natural Ovens Bakery, Kreamo, Golden Hearth, and Castle.

Trade Dress: what is it, and how can it be protected?

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What is trade dress?

The overall commercial image of a product that indicates or identifies the source of the product and distinguishes it from those of others. It may include the design or shape/configuration of a product; and product labeling and packaging. Trade dress can consist of such elements as size, shape, color and texture, to the extent that such elements are not functional. In many countries, trade dress is referred to as ‘get-up’or ‘product design’.

What types of trade dress are protectable?

Traditionally, trade dress was viewed as applicable to products, and product packaging trade dress generally is more readily recognized as being distinctive and entitled to protection. The concept has been expanded in some countries to include services, such as a restaurant’s décor, menu, layout and style of service were protectable. In other countries, it may be more difficult to establish trade dress rights.

How may trade dress be protected?

In the US, trade dress may be protected via common-law rights and/or by registration. In most other countries, some types of trade dress can be protected through registration and through actions for passing off and/or unfair competition.

What are the requirements for registration of trade dress?

An application to register trade dress with the United States Patent and Trademark Office must include the same content as any other trademark application, including a description of the trade dress, identification of the product or service to be covered and payment of the appropriate fee.

While requirements vary from country to country, generally speaking, an application for trade dress must meet the standard requirements for any trademark application. The trade dress must either be inherently distinctive or have acquired distinctiveness. It cannot be functional.

How does one prevent others from using similar trade dress?

In the US, trade dress, like a trademark, is protectable under the federal Trademark Act (Lanham Act). If the trade dress is unregistered, the trade dress owner must articulate which aspects of its product or packaging constitute trade dress and establish that the trade dress is protectable. The owner must then establish there is a likelihood of confusion, using factors generally the same as in a case comparing traditional trademarks or logos. Trade dress rights may be enforced through an action in federal district court or through an opposition or cancellation proceeding before the USPTO’s Trademark Trial and Appeal Board.

In many other countries, protection arises mostly from filing and distinctiveness and is examined within the registration process. In addition to trademark law actions, actions for unfair competition and passing off provide a basis for enforcement under certain circumstances.

Source: ​The International Trademark Association – an association of trademark owners and professionals that supports trademarks and related intellectual property

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