CAMDEN, N.J. (Legal Newsline) – Popular East Coast convenience store operation Wawa
Inc. and parent company Wild Goose Holding Co. Inc. have filed a complaint against Dawa
Food Inc., stating that the defendant is committing trademark infringement and other counts.
The civil action in the U.S. District Court for the District of New Jersey claims trademark infringement, false
designation of origin, trademark dilution and unfair competition arising under
the Lanham Act. Pennsylvania-based Wawa claims that it has been one of the leading food and
convenience store retailers in the United States, especially on the East Coast.
It asserts that it is a well-known and established company that sells goods under the name
and mark Wawa, which is used in advertisements across media forms. Wawa’s
argument is that Dawa, based in New Jersey, is using a logo and name that is
too like Wawa's established brand, which could be misconstrued as an affiliate
“It [Wawa] will probably be successful,” Stephen Baird, chair of the Intellectual Property Department at Winthrop & Weinstine,
P.A., told the Pennsylvania Record. “Wawa
brought a number of different claims for federal trademark infringement of a
registered mark, that’s the one that they probably stand the best chance of prevailing
Baird continues, “In order to do so, they will have to show
likelihood of confusion between Wawa and the Dawa mark. The dilution question is
one that doesn’t require the showing of likelihood of confusion. It’s a harder
burden to establish dilution; it’s also a harder burden to qualify for protection
In 1997, Wawa was involved in a federal trademark dilution decision
(Wawa v. Haaf). In this case, the establishment, HaHa, was found to dilute the
uniqueness of the Wawa mark. Since that trial, federal trademark law has
gone through many changes.
The law now requires that the mark, to be protected, is widely recognized by the general consuming public of the U.S. “The fact that
it’s [Wawa] a regional grocery store chain or convenience store, probably takes
it out of being qualified for protection under the federal dilution statue,”
Baird said. “Unless they have survey evidence that shows consumers all over
the country know Wawa.”
Dawa says it will defend its name and the distinct
meanings of the marks on its logo, versus the Wawa logo. Wawa’s logo includes
a picture of a flying goose, a reference to a Native American for the Canada
goose being "Wawa."
Dawa’s logo includes a leaf and the name meaning “Welcome” in
the owner’s native Korean language. The leaf and meaning do not seem to have
any connection to each other. “People don’t have to see the Dawa sign and
believe that it’s Wawa, that’s not the test,” Baird said. “The likelihood of
confusion test is, people could think there is some sort of connection between
Dawa must prove that its meaning is completely different
from Wawa’s meaning in order to prevail going forward in this case. But Baird doesn’t
see that happening.
“There’s only one letter difference between the two marks
and there are a lot of similarities visually and in terms of the sound,” Baird
said. “It has the same cadence and sound.”
In addition to the Haaf case, this isn’t the
first time that Wawa has found itself in the middle of a trademark battle. Many
establishments since the 1997 case have tried to operate under names similar to
Wawa’s name and signature logo, but Wawa has been very vigilant in protecting its trademark rights.
“They always seem to win,” Baird said. “It would take quite a
well-funded defense to overcome that.”