World Nutella Day originated in 2007 when Sara Rosso, an American blogger living in Italy, recognizing that even with 365 days on the calendar, not one lionized the Nutella® hazelnut-chocolate treat. Sara enlisted Michelle Fabio, an American lawyer-turned-freelance writer and editor, living in her family’s ancestral village in Calabria, Italy

World Nutella Day was born: www.nutelladay.com.

Trademark holder Ferrero: Cancel the party

But then Nutella demanded immediate cancellation of World Nutella Day
Co-organizer Sara Rosso received a cease and desist letter from Ferrero, SpA, the Italian company that owns the Nutella trademark. For those of you unfamiliar with the Nutella® product, it’s a delicious hazelnut spread, with a definite hint of cocoa. This gooey concoction has an ardent international fan base.
There are many ways to eat the Nutella® spread, some of which are delightfully described in this article. Suffice it to say, those who love Nutella were somewhat disgruntled at being asked to back away from an opportunity to eat more Nutella spread.

World Nutella Day Saved!

But after speaking with Sara Rosso, Ferrero embraced the celebration. Ferrero reported “A positive contact between Ferrero and Sara Rosso, owner of the non-official fan page called World Nutella Day, and closes the case. Ferrero wishes to express its sincere gratitude to Sara Rosso for her passion for Nutella, a gratitude it extends to all the fans of the Nutella World Day.” Ferrero explained, “The problem arose from a routine procedure in defense of trademarks, activated following improper use of the Nutella trademark within the fan page.”But once the solution was found, “we immediately interrupted any type of action. Ferrero considers itself lucky to have such a devoted and loyal fan as Sara Rosso.”

Shapiro Law analysis

I do understand how something like this can happen. Most certainly, a mark owner is duty-bound to enforce a mark’s exclusivity. But there had to be a better way to resolve Ferrero’s concern over Sara Rosso’s unofficial celebration. For example, the lawyers could have consulted the business people before abruptly shutting down Nutella fans all over the world.

A trademark owner should (*almost*) always take steps when there is an unauthorized commercial use of a mark in a fashion that suggests a connection, affiliation, association that doesn’t exist between your company and the alleged infringer. That said, it is important to consider whether the actor is a friend or foe.

If a friend or potentially someone that your organization might want to work with, an initial friendly contact — giving the alleged infringer the benefit of the doubt may be in order. Think carefully about the initial approach and consider how best to elevate any real dispute. Sometimes a business-to-business contact will get a great result. For example, a positive outcome might be a licensed relationship (see Colbert’s Hobbitual Exposure post).
If B2B contact doesn’t get the desired result, you can still bring in a lawyer to escalate your demand. But if you do plan to reach out to a possible bad actor, contact your trademark attorney first to be certain the strategy you propose will be in keeping with both your brand image and the legal duty you owe your mark.

*Why *almost* always and not simply always?

There are uses of trademarks that are unauthorized but that do not constitute infringement, e.g., nominative use in which the product cannot be readily identified without using the trademark and only as much of the mark as is necessary is used to identify the product. There is no suggestion of sponsorship or endorsement by the mark holder.
More significantly, even if you have valid, registered mark, it is possible that the alleged infringer has common law rights that may be superior to the statutory rights associated with your registered mark. In the United States (and other common law countries), the first to use a given mark can acquire trademark rights, even without registering a mark. These are called common law rights, which can trump someone else’s applied-for or even registered mark, if the entity’s first use in commerce evidences priority.

—M. L. Shapiro