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This lawsuit highlights an awkward but common situation where a senior trademark owner and the USPTO disagree on whether a likelihood of confusion exists between two trademarks. If a junior user’s trademark is allowed to be registered by the USPTO, sometimes a senior user has no option but to bring a federal lawsuit and/or a TTAB cancellation proceeding.

HealthSmart Foods, an Evansville, Indiana-based producer of health food snacks (e.g. snack bars, snack bites, shakes, and candies) has filed a trademark lawsuit against Sweet Nothings, a small California company selling healthy family snacks like packaged smoothies and “nut butter bites.”

HealthSmart Foods sells a line of snack clusters, crisps and patties called SWEET NOTHINGS.

Sweet Nothings has obtained a trademark registration for its SWEET NOTHINGS trademark after successfully overcoming a 2(d) likelihood of confusion refusal citing the HealthSmart Foods’ trademark registration. The 2(d) refusal was seemingly overcome with evidence that the “SWEET NOTHINGS” trademark is very highly suggestive of the type of goods and therefore entitled to a very narrow scope of protection. Specifically, the evidence consisted of fourteen examples of entities in HealthSmart’s industry who use the marks “SWEET NOTHINGS” or “SWEET NOTHING” as a source indicator in connection with goods and services legally identical to HealthSmart’s goods:

  • Sweet Nothing Desserts, LLC – Located in Georgia, they bake cakes and cookies to order
  • Sweet Nothing Fine Cakes and Desserts – Located in Wisconsin, they bake high quality
  • cakes
  • Sweet Nothings Cake Shop – Located in Southern California, they offer a variety of
  • baked goods
  • Sweet Nothings Cakes – Located in Wisconsin, they bake cakes for special occasions
  • Sweet Nothings – Located in Ohio, they offer a variety of snacks
  • Sweet Nothings Cookies – Located in Arkansas, they offer custom cookies
  • Sweet Nothings Custom Cookies – Located in North Carolina, they offer custom cookies
  • Luv Ice Cream – Located in Minnesota, they offer “Sweet Nothings” branded fruit and
  • candy
  • Sweet Nothings – Located in New Jersey, they offer a variety of chocolates and candy
  • Sweet Nothings Snacks – Located in Utah, they offer a variety of snacks
  • Sweet Nothings – a brand of nougat cluster candy offered by Healthsmart, located in Indiana
  • Krissy’s Sweet Nothings – an online business that offers cakes
  • Sweet Nothings & Pastries – Located in Texas, they offer a variety of cupcakes and cakes
  • Sweet Nothings Cakes and Confections – Located in Missouri, they offer a variety of
  • cupcakes, cakes, pastries, and pies

HealthSmart Foods clearly does not agree with the USPTO’s decision to register Sweet Nothings’ trademark and now seeks the intervention of the Southern District of Indiana. I’d expect a similar “very highly suggestive” and “narrow scope of protection” defense to be presented, arguing that the Indiana company simply doesn’t have a strong enough trademark to enforce. Based on the location of the defendant (California), we might also see some preliminary jurisdictional challenges. Or, if the defendant doesn’t have the stomach for a legal fight in federal court in Indiana, a quick name change could be a potential outcome.

Stay tuned for updates.

HealthSmart Foods, Inc. v. Sweet Nothings, Inc. et al.

Court Case Number: 3:23-cv-00060
File Date: April 13, 2023
Plaintiff: HealthSmart Foods, Inc.
Plaintiff Counsel: Joshua A. Claybourn of Jackson Kelly PLLC
Defendant: Beth Porter, Sweet Nothings, Inc.
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement, Common Law Unfair Competition, State Trademark Dilution, Injury to Business Reputation
Court: Southern District of Indiana
Judge: Matthew P. Brookman
Referred To: Mark J. Dinsmore