WADDLE IN THE COURT: Original Penguins Parent Company Sues Pudgy Penguins For Trademark Infringement!

Waddle in the court!

Original Penguin’s parent company, PEI Licensing, has filed a lawsuit against Pudgy Penguins, claiming the popular NFT brand is infringing on its penguin trademarks.

 

 

In the lawsuit, PEI writes that its brand Original Penguin has been using the word Penguin and a black-and-white drawing of a penguin as logos since the 1950s and 60s, and that it owns 35 different Penguin marks covering goods ranging from clothing to pillows.

 

“Defendant is engaged in the unauthorized use of a family of PENGUIN marks including, for example: PUDGY PENGUINS; PENGU NATION; I AM MY PENGUIN, AND MY PENGUIN IS ME.; FOREVER PUDGY PENGUINS, and various penguin designs (collectively,"Defendant's Marks"). Defendant uses Defendant's Marks in connection with apparel, fashion accessories, and retail sales services related to apparel and fashion accessories,” PEI wrote in its lawsuit that was filed in the United States District Court for the Southern District of Florida.

 

PEI also shared examples of its products compared to Pudgy Penguins products that it claims constitute trademark infringement. Check them out below:

 

“As a result of the aforesaid acts by Defendant, PEl has suffered and continues to suffer substantial damage and irreparable injury,” PEI wrote. “PEl has no adequate remedy at law, and unless Defendant is restrained and enjoined by the Court, these acts will continue to cause damage and irreparable injury to PEl, and damage its goodwill and business reputation. PEl cannot ascertain the precise amount of its damage at this time, but such damages are likely to include disgorgement of all profits and treble damages (i.e., triple damages) for willful infringement.”

 

PEI ended its lawsuit by requesting a jury trial.

 

Following the filing, Pudgy Penguins responded to the lawsuit with a popular Office meme, posting an image of its mascot Pax next to Original Penguin’s mascot while Pam says, “They’re the same picture,” poking fun at the suit and its claims.

 

 

While Pudgy Penguins appears confident it has done nothing wrong, IP and corporate attorney Ariel Givner says the case could go either way, though she doesn’t see much consumer confusion.

“Honestly this isn’t a crazy lawsuit but it’s also not a slam dunk for them,” she tweeted. “Their strongest argument is apparel. They have a ton of old incontestable registrations for the penguin logo and PENGUIN marks specifically for clothing. Once Pudgy started selling hoodies, hats, shirts etc it puts them directly in the same lane, which courts care a lot about. That said, the marks themselves are pretty different. The Original Penguin logo is the skinny tux penguin. Pudgy’s is the round cartoon NFT penguin. Totally different commercial impression. And “penguin” is an animal, not a super unique word. So the real fight will be… are consumers actually going to think Pudgy Penguins apparel is connected to the Original Penguin clothing brand. My guess is this probably settles. If it went all the way I’d say maybe slightly favorable to PEI because of the apparel overlap, but Pudgy definitely has real defenses. Personally, I don’t see consumer confusion, but I’m not the one deciding it.”

 

 

The Gazette will continue to follow this PENGUIN V. PENGUIN lawsuit and let you know what happens next. Stay tuned for updates!