Two dairies are asking a federal court to decide whether popular plastic imitations of old-fashioned glass milk bottles can be trademarked.
On Aug. 10, Shamrock Foods Co. filed a declaratory judgment action in U.S. District Court in Phoenix against Dean Foods Co.
The firm is seeking a ruling that the packaging for its Shamrock Farms ``mmmmilk'' brand of single-serve milk products do not violate any trademark or trade dress rights. Chicago-based Dean Foods has applied for a trademark for its high density polyethylene Milk Chug single-serve bottle.
``The milk bottle shape is public domain; everybody has had that shape,'' Ann Puelz, marketing director for Shamrock's dairy division, said in a telephone interview. ``Therefore, we are asking the federal court for a ruling that Shamrock did not infringe on Dean's or anyone else's bottle shape.''
Dean Foods and Phoenix-based Shamrock, along with several other dairy firms, have begun marketing single-serve, wide-mouth plastic milk bottles reminiscent of glass milk bottles once used for home delivery. The new single-serve containers have recloseable caps and fit in automobile cup holders.
Puelz said Shamrock received correspondence from Dean Foods in June that threatened legal action based on Dean's pending trademark. In response, Shamrock filed a declaratory judgment action.
``The defendant wants to play offense,'' said Dale Kleber, vice president and associate general counsel for Dean Foods. ``Their claims are inaccurate that Dean Foods was threatening a lawsuit. Dean [Foods] had been trying to talk with their lawyers.''
Dean Foods rolled out the Milk Chug in pint and quart sizes about 11/2 years ago. The product met with market success.
``There are hundreds of other small bottles that Shamrock could have utilized,'' Kleber added. ``But it was more expedient for Shamrock to imitate the bottle and cap of Dean's Milk Chug.''
Kleber said that when the Milk Chug hit the market, no dairies were using glass bottles. Therefore, the plastic bottle shape, which resembles a glass bottle, became associated with Dean Foods' Milk Chug. Even if a firm had a trademark on the glass bottle shape, lack of use renders the trademark null, he said.
Dean Foods has filed a counterclaim to Shamrock's action. The firm contends that Shamrock's bottle constitutes unfair competition with Dean.
``The U.S. Patent and Trademark office has a history of upholding container shapes as trademarks,'' Kleber said. ``We have applied for a trademark on the bottle and the cap has a design patent. [Shamrock's] cap has similarities to ours and we think that's intentional.''
However, Shamrock's suit contends that Dean Foods cannot appropriate the traditional milk bottle shape as its exclusive property.
``We began using milk bottles when we began in the dairy business in 1922, delivering our milk to customers in a Model T Ford,'' Shamrock Chairman Norman McClelland said. ``Now Dean [Foods] is claiming they have the exclusive right to this bottle shape. We certainly do not accept the proposition that our use of bottles having the shape we've used over the past 75 years can somehow constitute a violation of Dean's rights or anyone else's.''
A court date has not been set.