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 of Wawa's.
“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 on.”
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 from dilution.”
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 the two.”
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.”