If you live in Chicago, you’re probably a fan of the strange-yet-delicious popcorn mix sold by Garrett Popcorn. Known as “Chicago Mix,” ordering this popcorn will get you a combination of caramel and cheese popcorn. Or at least it used to. This month, the owner of Garrett Popcorn settled with the owners of Candyland, a smaller popcorn chain in St. Paul, Minnesota. So, next time you walk into Garrett be sure to use the mix’s new name, which will most likely be “Garrett Mix.”
While it may seem odd that a Minnesota company gets to use the phrase “Chicago” over a Chicago-based company, it all comes down to trademark law. Candyland owns the trademark and filed infringement suits against Garrett’s owner, as well as two other popcorn companies. While the other companies have not yet come to an agreement, Garrett’s owner decided to settle, claiming they had already been considering renaming the popular mix. It seems no harm, no foul here, but was this the right move?
This case exemplifies the purpose of trademark law. In order to prevent consumer confusion, a company obtains trademark protection when they begin to use a phase in commerce that identifies the trademark owner as the unique source of their product. Filing for trademark registration under federal law provides additional protections including an order to stop infringers and monetary penalties against those infringers. Candyland’s owner did just that, enforcing the rights the mark has provides. Before this suit, Candyland sent Garrett a letter asking them to cease use of the name when a representative saw Garrett using it at a trade show. Garrett stopped using the name for a bit, but resumed until this settlement occurred.
Notwithstanding Candyland’s legal rights, common sense tells us that this should have ended differently. Why would a company operating in St. Paul be able to use “Chicago” over a Chicago-based company? Does it really make sense to allow this simply because Candyland began using the name before Garrett? Or do legalities of trademark law seem to have less of a place in this situation?