66ºF

H-E-B suing drink mixer company for trademark infringement on ice cream products

Swoon products developed and tested at H-E-B’s ice cream plant in San Antonio

H-E-B store at 20725 TX-46 in Spring Branch.
H-E-B store at 20725 TX-46 in Spring Branch. (Google Maps)

SAN ANTONIOH-E-B filed a lawsuit in federal court on Sept. 18 against a drink mixer company for trademark infringement, unfair competition, trademark dilution, cancellation of a registered trademark, refusal of trademark applications, and unjust enrichment.

According to the lawsuit, H-E-B is suing Swoon Brands LLC over the use of the SWOON label, which the Texas grocer claims it spent “years developing and testing the products in-house at H-E-B’s ice cream plant in San Antonio" before launching in 2017.

H-E-B claims in the lawsuit that SWOON products generated nearly 100 million impressions on social media after the campaign’s initial launch and that the SWOON mark is distinctive and “strongly associated with H-E-B and its products.”

“As a result, H-E-B owns strong common law trademark rights and significant consumer goodwill in its SWOON mark,” the lawsuit reads in part.

Additionally, H-E-B owns a federal registration with the U.S. Patent and Trademark Office for the SWOON mark.

The lawsuit states that Swoon Brands LLC originally launched as Be Mixed LLC in 2013 and changed its name to Swoon in 2018.

On April 27, 2018, Be Mixed LLC, according to the lawsuit, filed with the U.S. Patent and Trademark Office for the Swoon mark for products like beverages and snacks, nearly two years after H-E-B filed for the same trademark in May 2016.

“The parties spent several months discussing H-E-B’s objections in confidential compromise negotiations. While those compromise negotiations were still ongoing, Swoon Brands pressed forward with its planned expansion of the SWOON mark into Texas retailers,” H-E-B’s lawsuit states.

Be Mixed drink mixers were sold at H-E-B stores up until early 2020. The lawsuit claims that in January, H-E-B officials were notified that all Be Mixed products would transition to the name Swoon by March 1.

KSAT reached out to H-E-B officials and received the following statement in regard to the lawsuit:

“At H E B, we invest heavily in the development of our brands to provide our customers the best quality products. As a result, we cannot sit on the sidelines while others use without permission the intellectual property H-E-B and its Partners have worked so hard to develop. We would prefer to not go to court, but H E B must act to protect our trademarks and brand.”

The lawsuit states that Swoon brands is still selling products that H-E-B claims infringe on its trademark.

H-E-B is seeking monetary damages for from Swoon Brands LLC, “however, money damages alone cannot fully compensate H-E-B for the irreparable harm it has suffered and continues to suffer," the lawsuit states.

KSAT has reached out to Swoon Brands LLC for comment.

Read the full lawsuit below:


About the Author: