Joy Dog Food Inc. sued a competitor on Monday in the Southern District of Illinois alleging trademark infringement over the use of JOY on dog food. The plaintiffs argued they have “superior rights in the JOY mark.”
Joy Dog Food and its predecessors have been “continuously and exclusively” selling JOY dog and cat food since the 1950s. Meanwhile, the complaint states that defendant Joy Food Company stated selling JOY dog food in 2019. Joy Dog Food claims the JOY brand is “famous” and has been “featured in a major motion picture (from M. Night Shyamalan’s hit movie Signs (2002)), and Joy Dog Food memorabilia can fetch high prices at auction.” For example, the complaint shows images of a Joy Dog Food sign selling for over $300 and a hat for $69.99.
Joy Dog Food owns a valid and subsisting U.S. Trademark Registration No. 1,605,849 for JOY in connection with cat food (“the ‘849 Registration”). Furthermore, Joy Dog Food argued it has strong common law rights in JOY marks for dog food and cat food. The plaintiffs also argued that Joy Food Company is not competing fairly, and has instead “engaged in a continued pattern of willful, deliberate infringement and unfair competition, with flagrant disregard for Joy Dog Food’s rights.” As examples, in the complaint are images from Joy Food Company’s website with text highlighted that say, “This is Joy Dog Food” and “Why Joy Dog Food?”
Joy Dog Food also provided evidence of confusion between the company’s among professionals in the pet industry, such as blog writers and podcast guests mixing up the company’s names when discussing them or providing product reviews.
The U.S. Patent and Trademark Office (USPTO) in April of 2019, rejected the defendant’s trademark applications to register JOY as a trademark. Stated in the complaint, “the USPTO rejected Joy Food Company’s trademark applications, finding that Joy Food Company’s use of JOY with dog food is likely to cause confusion with Joy Dog Food’s registered JOY mark.”
Joy Dog Food asserted six counts against Joy Food Company. The first three counts are under the Lanham Act, 15 U.S.C. § 1114, alleging federal trademark infringement claims, unfair competition and trademark dilution. The fourth claim pertained to the common law trademark infringement, and the fifth and sixth claim pertained to Illinois trademark laws.
Joy Dog Food has sought the court to enter judgment in its favor on all counts and award all damages proximately caused by the defendant’s alleged infringement and attorney’s fees. Joy Dog Food also seeks a preliminary and permanent injunction enjoining and restraining defendants from using the JOY trademark. The plaintiff is represented by Armstrong Teasdale.