Underwear versus Hummus in Trademark Dispute

A Canadian hummus maker is embroiled in a trademark dispute with an American underwear manufacturer over the use of the “Hanes” name on their respective products.

Yohannes Petros established his food business in Saskatoon, Saskatchewan, four and a half years ago.  He has four employees.

Hanesbrands, Inc. is based in Winston-Salem, North Carolina and is a publicly traded company with 50,000 employees worldwide.

Hanesbrands has threatened to sue Petros for violating the Hanes trademark.  The US company has also demanded that Petros destroy his stock of allegedly infringing hummus.

Hanesbrands sent Petros a “cease and desist” letter objecting to his use of the mark “Hanes Hummus” in his application to register the name in Canada and the United States:

The mark HANES HUMMUS is essentially identical and confusingly similar to the HANES mark.  Your … mark incorporates the distinctive HANES mark in its entirety and the mere addition of the generic wording HUMMUS does not distinguish the marks.

The underwear company asked Petros to withdraw his application for the trademark.

Petros told reporters that the name “Hanes” comes from his nickname, which is short for “Yohannes.”

His trademark attorney responded to Hanesbrands with 36 pages of case law opposing the underwear company’s contention that consumers would confuse the hummus maker with the underwear brand:

I was not aware that HBI [Hanesbrands Inc.] was in the business of manufacturing and selling hummus. In fact, I am confident that HBI is not in the food production business at all, let alone the production of fine and tasty hummus of the type manufactured and sold by Hanes Hummus.

Petros said that his customers had never confused his product with Hanes underwear.  “I was not aware that HBI’s T-shirts were edible, made with chick peas, lemon or garlic,” his trademark lawyer added.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson

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