Why isn’t the new S’mores Oreo called S’mOreos? A few legal considerations

This week, Oreo announced a new flavor of cookies: S’mores. That is, “S’mores Oreo”. The decision to name them S’moreos should have been obvious, and Twitter is ON IT. Here’s just a taste of the outrage:

You get the idea.

Turns out, there’s actually a pretty basic explanation for Nabisco’s decision not to call them S’moreos: someone else holds the trademark. A quick search of the United States Patent and Trademark Office’s Trademark Electronic Search System (TESS) database reveals that the mark for “S’moreos” was awarded to Tracy Carroll of Newton, MA back in June.* It states that s/he was awarded the Trademark for “[f]ood package combinations consisting primarily of bread, crackers and/or cookies”. Not quite this, but not quite not, either. Registration granted Carroll, according to the PTO, “legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods/services listed in the registration.” In other words, rolling with “S’moreos” could have ended up a legal headache for the multibillion dollar company.

*Update, 8/11/2016: I fixed the broken link. It seems Carroll abandoned her trademark in November 2015, less than a year and a half after she got it and less than a year after I wrote this post. If her squatting really was originally the reason for the curious naming decision, Nabisco is now free to use “S’moreos” or “s’mOreos” or whatever tickles its fancy. That said, tempting as it may for the National Biscuit Company to adopt a brand-new portmanteau — even at the cost of renaming one of its now-established products — it’s probably still better off sticking with the distinctive “Oreo” mark. Or, I suppose, it could be what I speculate below…

Of course, Nabisco has options to contest that trademark registration. Within 30 days of Carroll’s filing, it could have contested the mark. Even now, it could sue for cancellation on the grounds that it “believes that [it] is or will be damaged by [Carroll’s] registration.” Or it could simply sue Carroll for infringing its “Oreos” trademark on the grounds that “S’moreos” presents a substantial risk that consumers will confuse it with the official black and white cookie. Indeed, the USPTO’s examining attorney should have examined new Trademark applications to identify similarity to previously-registered marks; maybe s/he believed there was no potential likelihood of confusion.

Of course, at the end of the day, Nabisco is an enormous corporation with a lot of money at stake, and even if it chose not to squash Carroll with the help of the legal system, it certainly could have at least afforded a covenant not to sue. In other words, all those complaints posted on Twitter are right: Nabisco could have called the cookies “S’moreos” if it really wanted to. Why didn’t it? Gun to my head, I’d say because people have been making these and calling them S’moreos for so long —

smoreo

— it might have had difficulty establishing an exclusive association between the Oreo brand and its brand new product anyway. And that failure would have undermined the whole point of securing the Trademark, since that species of intellectual property primarily exists to identify specific products or services as coming from a particular source. In other words, they might prefer S’mores Oreo precisely because it’s such a dumb name.

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2 thoughts on “Why isn’t the new S’mores Oreo called S’mOreos? A few legal considerations”

  1. In addition to the Human Rights fraud, the subject of this article, there is also a fraud being perpetrated in this comment stream by a three-some of trolls, whose absurd comments are such blatant troll-speak of outrageous hyperbole, they can only be amateurs, mere novices. Roust them out by not replying to them.
    Unfortunately I did reply to one, before the realization hit me that it was game time. I’ll delete my replies tomorrow morning.

    Liked by 1 person

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