Crackerjack currently skates with the Hotrod Honeys of the Texas Rollergirls. Coincidentally, Frito-Lay is based in Plano, Texas. This reminds me of how Starbucks, which calls Seattle home, tried to jam up its hometown roller derby league, the Rat City Rollergirls, over a trademark issue.
Frito-Lay filed the opposition yesterday, April 8, 2009. Here’s a summary of their arguments as to why Frito-Lay would be harmed if Crackerjack‘s mark was registered with the USPTO.
According to Frito-Lay, its snack foods are marketed and sold in tremendous quantities on a nationwide basis. Frito-Lay sells so much candied popcorn each year that, according to Frito-Lay’s attorney, Jeanette Zimmer, it entitles them to the exclusive use of the word “crackerjack“.
Frito-Lay is opposing the registration of Crackerjack as a service mark in connection with roller derby competitions because:
1. The Word “crackerjack” Is Merely Descriptive. Frito-Lay rightly acknowledges that “crackerjack” is not a fanciful word that Frito-Lay invented, and it is not unique to Frito-Lay. “Crackerjack” is a word in the english language, which means “a person or thing that shows marked ability or excellence”. (Its origin: 1890–95, Americanism, earlier crackajack, rhyming compound based on crack (adj.); and jack, “chap, fellow”.)
- Frito-Lay believes that Crackerjack should not be allowed to register her name in connection with roller derby because it describes (or, as Frito-Lay’s lawyer shockingly says, “misdescribes”!) Crackerjack‘s abilities in competing in roller derby competitions. Because Frito-Lay contends that the word “crackerjack” is merely descriptive, Frito-Lay believes it should not be afforded trademark protection by the USPTO.
2. Likelihood of Confusion. Frito-Lay claims that the members of the public who purchase candy will likely confuse the roller derby competitor Crackerjack with the candied popcorn confection Cracker Jack.
- According to Frito-Lay, Crackerjack, when used in connection with roller derby, will cause confusion, mistake, or deception.
- However, during the application process, the USPTO specifically said that there were no similar or pending marks in the USPTO database that would bar Crackerjack‘s registration for the mark as a roller derby competitor.
For a video manual on the difference between Crackerjack and… everything else, click here.
3. Dilution. Frito-Lay claims that the use of “crackerjack” in connection with roller derby will either:
3a. somehow, in the public’s mind, lessen the connection between the mark Cracker Jack and candied popcorn; (this is called “blurring”) and/or
3b. weaken the value of the mark Cracker Jack in connection with candy through an unsavory or unflattering association with roller derby. (this is called “tarnishment”)
4. False Suggestion of a Connection. Frito-Lay claims that Crackerjack is attempting to forge a false connection between her roller derby competitions and the candied popcorn confection Cracker Jack.
- According to Frito-Lay, “persons” are likely to believe that Crackerjack the roller derby competitor is in some way legitimately connected with Frito-Lay, and this would cause harm to Frito-Lay.
Addendum: For an interesting etymology of the word “crackerjack” by Barry Popik, click here. Barry Popik is contributor-consultant to the Oxford English Dictionary, Dictionary of American Regional English, Historical Dictionary of American Slang, and the Yale Dictionary of Quotations.