PEI Licensing, the firm behind the clothing brand Original Penguin, has filed a lawsuit against the nonfungible token project Pudgy Penguins, alleging trademark infringement, dilution and unfair competition.
The lawsuit, filed in a Florida federal court on Wednesday, focused on claims around Pudgy Penguins’ apparel, accusing the company of using a “family of penguin trademarks that are confusingly similar” to its own.
“This action results from Defendant’s unauthorized use and attempted registration of various PENGUIN word and design trademarks in connection with apparel and related goods and services that are confusingly similar to PEI’s federally registered and famous PENGUIN and penguin design trademarks,” PEI said in its complaint.
PEI claimed in its lawsuit that it has used the “PENGUIN word mark at least as early as 1967” and first used a “penguin design” on apparel as early as 1956.
PEI Licensing said that it sent a cease and desist to Pudgy Penguins in October 2023, claiming its “products infringe and dilute PEI’s famous PENGUIN Marks.”
The letter also demanded that Pudgy Penguins abandon applications with the US Patent and Trademark Office “to register various PENGUIN marks,” according to the lawsuit.
PEI claimed that Pudgy Penguins had “misappropriated valuable property rights of PEI,” which was “likely to cause confusion or mistake, or to deceive members of the consuming public.”
PEI asked the court to order the USPTO to reject Pudgy Penguins’ applications and stop the company from allegedly infringing on its trademark.
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It also requested that Pudgy Penguins be ordered to destroy any products found “likely to be confused” with PEI’s trademarks and be awarded all profits from the sales of such products.
Pudgy Penguins’ legal chief, Jennifer McGlone, told Cointelegraph that the company “was surprised by the action, particularly as both parties had been engaged in productive discussions to resolve this matter privately.”
McGlone said the company had advanced applications with the USPTO and was “confident that PEI’s claims lack merit. The trademarks in question are visually distinct and serve entirely different audiences and markets.”
“We have the utmost confidence that we will prevail as Pudgy Penguins has already secured multiple trademark application approvals from the USPTO covering the Pudgy Penguins brand and related marks,” she said.
Meanwhile, the Pudgy Penguins X account posted a meme implying that its brand bears no similarities with Original Penguin.
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