H-E-B yanks Swoon Mixers
S.A. grocer sues N.Y. cocktail-mix maker over name change
San Antonio’s H-E-B yanked a cocktail-mix maker’s products from store shelves earlier this year after a dispute over their new name.
Be Mixed became Swoon Mixers in Texas onmarch 1 despite HE-B objecting to the name change.
H-E-B opposed the switch because it uses the Swoon name on its private-label ice cream, which comes in more than a dozen flavors, from Texas Brownie A La Mode to Lemon Poppy Cake.
H-E-B now is suing New Yorkbased Swoon Brands LLC for trademark infringement in San Antonio federal court, seeking unspecified monetary damages.
The grocery chain also wants the court to order the U.S. Patent and Trademark Office to cancel Swoon Brands’ trademark registration and to reject three pending trademark applications.
“At H-E-B, we invest heavily in the development of our brands to provide our customers the best quality products,” spokeswoman Dya Campos said in an email. “As a result, we cannot sit on the sidelines while others use without permission the intellectual property H-E-B and its partners have worked so hard to develop.
“We would prefer to not go to court, but H-E-B must act to protect our trademarks and brand,” she added.
Calls to Swoon Brands and its trademark attorney were not immediately returned today.
Before H-E-B launched Swoon ice cream in June 2017, it spent years developing and testing products at its San Antonio ice cream plant, according to the lawsuit. The products have tallied millions in units sold and registered consistent sales growth.
The Patent and Trademark Office issued H-E-B a trademark registration for Swoon in the spring of 2018, ornearly two years after the grocer submitted an application.
Swoon Brands LLC predecessor Be Mixed LLC incorporated in 2013, selling sugar-free, zero-calorie cocktail mixers in supermarkets, including H-E-B. Be Mixed was registered as a trademark in January 2018.
A few months after it received the trademark, Be Mixed LLC applied to trademark Swoon.
The Patent and Trademark Office has established 45 classes, or categories, of trademarks that cover all goods and services.
Be Mixed LLC’S application covered both Class 30, for staple foods, and Class 32, for light beverages. H-EB’S trademark covers Class 30.
“Swoon Brands had nearly two years during which even a cursory trademark clearance search would have revealed H-E-B’S prior-filed application for the exact same mark covering goods in the same class, and about ten months during which a search would have revealed H-E-B’S ongoing use,” the grocer says in its lawsuit.
The rebranded Swoon products were launched around July 2019, the suit says. H-E-B raised its objections a few months later.
“When H-E-B first lodged these objections, it had yet to learn an especially troubling fact: Swoon Brands also planned to expand the infringing Swoon mark into Texas retailers,” H-E-B says. Be Mixed products were still being sold in Texas, including at H-E-B, at the time.
The cocktail-mix maker incorporated as Swoon Brands LLC in December, records show.
The two sides spent several months attempting to negotiate a compromise. Even so, H-E-B says Swoon Brands moved forward with its planned expansion in Texas.
H-E-B’S business team received a presentation from Swoon Brands’ vice president of sales and marketing at the beginning of this year, when it learned the Be Mixed products would transition to Swoon Mixers starting March 1.
Swoon Brands recently expanded its products into beverages with the addition of Swoon Lemonade, H-E-B says.
“While Swoon Brands sells its infringing products in other Texas retailers, it no longer sells in H-E-B’S stores,” the grocer says in its complaint. “For obvious reasons, H-E-B pulled Swoon Brands’ products from its stores earlier this year.”
Since receiving a trademark registration last year for the name Swoon, covering Class 30, Swoon Brands’ has filed applications to use Swoon Mixers and Swoon Lemonade.
H-E-B argues that Swoon Brands’ use of of Swoon is “likely to confuse consumers.”
The “risk of consumer confusion is especially troubling because, unlike Swoon Brands’ infringing Swoon products, H-E-B’S Swoon products are not zero-calorie or sugar-substitute products,” H-E-B says.