PEI Licensing, the company behind clothing brand Original Penguin, has filed a lawsuit against non-fungible token project Pudgy Penguins, alleging trademark infringement, dilution, and unfair competition.
The lawsuit, filed in federal court in Florida on Wednesday, focused on allegations related to Pudgy Penguins apparel, accusing the company of using “a group of confusingly similar penguin trademarks” for its own.
“This action results from Defendant’s unauthorized use and attempted registration of numerous PENGUIN word and design trademarks in connection with apparel and related goods and services that are confusingly similar to the well-known PENGUIN and penguin design trademarks federally registered in Prince Edward Island,” P.E.I. said in its complaint.
PEI claimed in its lawsuit that it had used the “PENGUIN word mark at least since 1967” and first used the “penguin design” on clothing as early as 1956.
PEI Licensing said it sent a cease-and-desist order to Pudgy Penguins in October 2023, claiming that its “products infringe and dilute PEI’s iconic PENGUIN marks.”
The letter also required Pudgy Penguins to abandon applications to the U.S. Patent and Trademark Office “to register various PENGUIN marks,” according to the lawsuit.
Prince Edward Island alleged that Pudgy Penguins “misappropriated valuable proprietary rights to PEI,” which was “likely to cause confusion or error, or to deceive members of the consuming public.”
Prince Edward Island has asked the court to order the USPTO to deny Pudgy Penguins’ applications and prevent the company from allegedly infringing its trademark.
Related to: The SEC ends its case against Justin Sun with a $10 million settlement
It also asked that Pudgy Penguins be ordered to destroy any products “likely to be confused” with Prince Edward Island’s own brands and be awarded all profits from sales of those products.
Jennifer McGlone, chief legal officer of Pudgy Penguins, told Cointelegraph that the company was “surprised by this action, especially since both parties had been engaged in productive discussions to resolve this matter privately.”
McGlone said the company had advanced applications with the US Patent and Trademark Office and was “confident that Prince Edward Island’s claims lack merit. The trademarks in question are visually distinct and serve very different audiences and markets.”
“We have the utmost confidence that we will prevail, as Pudgy Penguins has already received multiple trademark application approvals from the USPTO covering the Pudgy Penguins trademark and related marks,” she said.
Meanwhile, the account Pudgy Penguins
magazine: Cryptocurrency lawyers warn that clarity law risks repeating Europe’s mistakes
