In March, attorneys representing the Saratoga Spring Water Company sent a cease and desist letter to downtown’s Saratoga Juice Bar.
The letter reads “Your use of the SARATOGA trademark in this manner, on goods substantially similar to those sold by Saratoga Spring Water, is likely to induce customers to believe that there is an association between your products and those of Saratoga Spring Water. Your use of the SARATOGA trademark is therefore an infringement of our client's trademark rights.”
Saratoga Spring Water, perhaps best known for its iconic blue bottles, has held a trademark for the word Saratoga, as applied to mineral water, since 1894.
The Saratoga Juice Bar, located on Broadway, is one of more than 90 local companies that use the word Saratoga in their name.
Saratoga Juice Bar packages its colorful juices in clear plastic bottles. Company co-owner Christel MacLean says they responded to Saratoga Spring Water, claiming that they have no intention to begin bottling water.
“We want this to be known we have actually no desire to encroach upon the water space that Saratoga Spring Water occupies. We don’t want to do a water product, we don’t want to do anything involving water,” said MacLean.
The Spring Water Company responded with a Petition to Cancel, regarding Saratoga Juice Bar’s trademark.
MacLean does not believe there’s confusion between the two companies.
“What people are saying out there and what we’re reading on comments and blogs and things like that, and the press, is that people are going to market and they have no confusion between the iconic blue bottle or their plastic bottles, and our cold-pressed juice bottle,” said MacLean.
Saratoga Juice Bar does hold a trademark for its name.
Rob Heverly, an associate professor at Albany Law School, explains that after a trademark is published, there’s a period after when anyone who objects to the use of that trademark can file an opposition. When that happens, the U.S. Patent and Trademark Office will take a look and then make a determination. But, in this case, Heverly says…
“Saratoga Spring Water Company didn’t do that here. Because they haven’t done that they now need to bring a proceeding for a cancellation, and when they do that, they have to persuade the decision maker that there is a likelihood of confusion. They know bear the burden now of showing that this likelihood is going to exist,” said Heverly.
But, Heverly explains, proving confusion is not always an easy process. Heverly says the decision-maker would consider the strength of the Saratoga mark; the degree of similarity between the marks; proximity of the products – juice vs. water in this case; the likelihood that the prior owner will enter the defendant’s market – does the water company plan on making juice; actual confusion; the defendant’s good faith in adopting the mark; quality of the defendant’s product; and sophistication of the buyers.
The plaintiff will need to develop a factual record to prove confusion. All of this is why, Heverly says, these cases can be so expensive.
“This is not an easy case. This is not a case where you can say ‘Oh this is trademark abuse on their part.’ It’s going to be a real fact-based matter, in my view, as to whether they can prove the elements they need to prove, in order to make this kind of claim.”
So it’s possible this Battle of Saratoga will not be resolved any time soon.