Popcorn company lodges lawsuit over the use of "skinny" in marketing

An up-and-coming popcorn company is laying claim to the use of the word “skinny” in marketing materials and isn’t afraid to use legal action to enforce it.

SkinnyPop Popcorn LLC filed a complaint Sept. 17 in Chicago’s federal court accusing New York-based American Farmer Brands of violating SkinnyPop trademarks and diluting brand potency through the use of the word “skinny” in its marketing.

SkinnyPop is a relatively new Skokie company that sells ready-to-eat popcorn. SkinnyPop began selling its food in 2010 to local retailers and by 2014, SkinnyPop products have found their way into 25,000 retail locations throughout the country.

The company claims it has nearly half of the market share of healthy, ready-to-eat popcorn brand in grocery stores, making it the best selling ready-to-eat popcorn in the nation.

SkinnyPop asserts it has trademarks to “SKINNYPOP,” “THE BIG SKINNY,” AND “SKINNYPACK” in relation to its popcorn.After SkinnyPop registered its trademarks, the suit alleges American Farmer Brands filed an intent-to-use trademark application regarding the tagline “Oh! So Skinny!” it began to market its popcorn with shortly after.

The marketing used the phrase on social media and on the outside of the pre-popped popcorn bag. Pictures included in the lawsuit show packaging with the phrase “Oh! So Skinny!” and nutritional facts demonstrating the alleged healthiness of the snack. Similar health claims appear on SkinnyPop packaging in a similar fashion.

“Defendant was aware of the Skinny Marks when it filed its Application and had a specific intent to encroach upon on SkinnyPop’s intellectual property in filing the application and advertising the tagline on its products,” the suit asserts.

SkinnyPop claims the phrase “Oh! So Skinny!” is nearly identical to SkinnyPop’s trademarks and “would likely confuse consumers into believing that Defendant’s products are somehow associated with or related to SkinnyPop’s well-known popcorn products.”

American Farmer Brands disregarded an Aug. 6, 2014 demand from SkinnyPop to stop using the phrase, according to the complaint.

“Given SkinnyPop’s enormous sales, Defendant’s use of ‘OH, SO SKINNY!’ in connection with popcorn will cause SkinnyPop hundreds of thousands of dollars in damage even if only a small portion of the consuming public is confused into purchasing Defendant’s products,” the company claims.

In its suit, SkinnyPop is asking for a preliminary and permanent injunction preventing American Farmer Brands from using the phrase “Oh! So Skinny!” in promoting its ready-to-eat popcorn.

The plaintiff also wants declaratory relief and an award of punitive damages, costs and attorneys’ fees for the alleged trademark infringement and brand dilution.

This isn’t the first time SkinnyPop has gone after other pre-popped popcorn brands for using the word “skinny” in their marketing. In March of this year, SkinnyPop asked Cornfield, Inc. to stop pursuing a trademark for the phrase “SKINNY CALORIES” in relation to ready-to-eat popcorn.

SkinnyPop in April sought to deter Cornfield, Inc. from going through with a Canadian trademark application for the use of the phrase “HI I’M SKINNY POP." Also in April, the company tried to stop Dale & Thomas, makers of Popcorn Indiana pre-popped popcorn from pursuing a trademark for the phrase “BE THE SKINNY-EST."

Dale & Thomas and Cornfield Inc. have subsequently abandoned those trademark applications.

Attorneys Todd C. Jacobs and Matthew C. Wolfe of the Chicago law firm Grippo & Elden LLC filed the case on behalf of SkinnyPop. J. Noah Hagey and Allyson M. Fair of the San Francisco law firm Braunhagey & Borden LLP are also representing the plaintiff.