On July 13, the Southern District of Florida granted a preliminary injunction in favor of one weight-loss doctor enjoining a competing weight-loss doctor from using the common law trademark “COOKIE DIET.”
The court found in 1975, Dr. Sanford Siegal (pictured below left), president of plaintiff SM Licensing Corp., which obtained the injunction, created an 800-calorie diet in which the patient eats one meal a day, a prescribed dinner, and replaces all other meals with six specially-formulated cookies that suppress hunger. The diet has become known as the COOKIE DIET.
In 2002, defendant Dr. Sasson Moulavi (pictured right) and his company, U.S. Medical Care, Inc., entered into an agreement with Siegal Weight Management, Inc., a company that Dr. Siegal controls, which gave Dr. Moulavi an exclusive license to use Dr. Siegal’s diet and certain of his intellectual property throughout the United States and Canada in exchange for a fee and royalties. Included in the deal was Dr. Moulavi’s right to sell weight-loss products that he agreed to purchase exclusively from Dr. Siegal. Dr. Moulavi also licensed a number of trademarks from Dr. Siegal’s SM Licensing Corp., though none of the agreements mentioned the COOKIE DIET mark.
The court sided with SM Marketing. It found: “The evidence is overwhelming that Siegel was the first to identify his weight-loss program and products as the Cookie Diet, and that he did so as early as 1975. The Court finds the testimony of Siegel, his staff and patients of many years credible, and specifically finds that Siegal and his staff routinely identified his services and products as the Cookie Diet in their daily interactions with patients, and that patients and other members of the dieting public came to associate them with the Cookie Diet.”
The court also found that Dr. Moulavi later adopted and used COOKIE DIET as a trademark, but that he failed to show that SM Marketing had abandoned its prior rights in the mark because Dr. Siegal continued to make “conversational” use of the mark. In the court’s words, “Siegal remained consistent in his use of the trademark, both before his agreement with Moulavi and during the four years of their contractual relationship; that is, he avoided its use in written materials, signage and advertising, but continued its conversational use with patients and participated in television news stories about ‘his Cookie Diet.’ Siegal did tell Moulavi on a number of occasions that he did not like the mark and did not want it used to promote his weight-loss program. During this same period of time, however, Siegal appeared on multiple television news programs knowing that the focus of the story would be the idea that cookies could lead to weight loss, and suggesting to the reporters that he be identified as the creator of the Cookie Diet.”
Finally, the court found that Dr. Moulavi’s use of the mark inured to the benefit of Dr. Siegal even though it was not licensed to him because “Moulavi chose to use the trademark Cookie Diet in close association with the Siegal marks” that he did license. As the court explained: “Moulavi appropriated the Cookie Diet from Siegal in an effort to benefit from Siegal’s good will. In the process, he clearly furthered the association in the public’s mind between the weight-loss program Siegal developed and the Cookie Diet, and extended the geographic scope of Siegal’s ownership of not only his Siegal trademarks, but also the Cookie Diet trademark throughout the United States.”
The case cite is SM Licensing Corp. v. U.S. Medical Care Holdings LLC, No. 07-20293 (S.D. Fla.).