C3 Patent and Intellectual Property Law

Jul252009 | Steve O'Donnell

PEZ takes on the Museum of PEZ

On June 22, 2009, the PEZ candy company sued the proprietors of the Museum of PEZ for trademark infringement and the story was picked up by the press. I'll admit, at first glance I thought it was a bit draconian to sue over what many would consider free advertising, but there is more going on here than what most articles mention.

The basic story is not so new, in fact it happens pretty often. FOX has gone after Simpsons fan sites and an Australian company that tried selling Duff beer; McDonalds has attacked restaurants around the world that have used “Mc” or Mac,” including a topless one in Australia called “McTits.” Really, “McTits.” (note to self, consider vacation tax deductible business trip to Australia for research.)

In the PEZ case (complaint), a couple, presumably on a sugar high, began a PEZ museum celebrating all things PEZ. If that was all they did, the PEZ company might not have cared. Coca Cola has not tried to shut down the Coke fan page on Facebook, in fact, they are working with the page's creators. Why then has PEZ taken such a heavy handed approach?

The museum was not just a tribute to PEZ, but it was also a money making venture that traded off the PEZ marks. One point being made in all the reports I've seen on the case is the giant “Dispenser of PEZ” that ejected packages of PEZ through a familiar and delicious tracheotomy. The PEZ company is not happy that the museum has made it's own dispenser and has promoted it as “The World's Largest PEZ.” That is clearly a violation of the PEZ company's rights to the name and image of PEZ, but by itself, maybe not enough to get too riled up over.

As a bit more serious infringement the museum has manufactured and sold t-shirts bearing the PEZ trademark without permission from the PEZ company and has also reused original PEZ shipping boxes for their own shipments, both actions could reasonably make a person think that museum is authorized by the company.

But what I consider the clearest infringement, the museum has produced altered “PEZIDENT” dispensers for the 2008 election for both President Obama and Senator McCain, something the PEZ company has never done, and the museum has also produced an altered dispenser bearing the name “Burlingame Museum of PEZ Memorabilia.”

At a certain point, the trademark owner really has to do something. If they allowed someone else to use their trademarks with impunity, they could lose any rights they have in the trademark.

What the museum's owners should have done was hire a lawyer to advise them on what they could do and try to work out licenses with the PEZ company. It certainly would have complicated things since PEZ would probably want to be involved with the museum's operations, but that also would have kept them out of the trouble they're in now.

As I said at the beginning, these kind of trademark cases come up from time to time. I bet the next one is the Mexican Duff beer, in fact I'm not sure why FOX hasn't done something about that yet.