Some of you in our community may be aware of the difficult situation that our team has been navigating regarding our trademark dispute with Big Spoon Sauce Company, which has resulted in a lawsuit after settlement negotiations failed.
Due to sensitivities around the legal case and the general understanding that settlement negotiations should be confidential, we have been limited with the information we can provide. However, since Big Spoon Sauce Co. has selectively spoken publicly about parts of the negotiations, we are now able to share more details about why we had to move forward with the case. Over the past week, we have also seen a lot of misinformation and misunderstanding, and we’d like to address that as well.
So much of the information we have seen from Big Spoon Sauce Co. and their supporters has focused on the small size of their business, implying that business size matters when it comes to legal accountability. They are a small business, and so are we, and we are sympathetic to their current stage in which the founders still do literally everything. When we were about a year old, in two farmers markets and a handful of retail stores, we similarly shipped a small number of e-commerce orders all over the country. That’s when we were able to secure a trademark for our brand, and we still sincerely want that security for them, too. It’s surprising to us that Big Spoon Sauce Co. doesn’t see the value in rebranding, because they have communicated that they want to grow their business. When they grow into wider distribution, and we think they will because people clearly love their products, the confusion already caused in the marketplace will grow, which would not be good for them or us if we both continue to use the same brand name of Big Spoon.
The picture painted by Big Spoon Sauce Co. of our small business as a bully and aggressor, implying that our filing of the suit was some kind of attack designed to put down a small business competitor, has been the most shocking. Those who have known us for any length of time understand that our commitment to transparency and kindness is instilled in the core of our brand—in how we source ingredients, how we show up in our community, how we grow our team, and in every aspect of our business. We advocated for small businesses on Capitol Hill just last week, we advocate for specialty food businesses on the NC Specialty Food Association Board, and for living wages throughout our home state of North Carolina. We have always wanted small businesses, and their employees, to flourish. It has also been alarming to see that through these public posts and comments, Big Spoon Sauce Co. has painted what seems to be a deliberately misleading picture of us, and most disappointingly, of our conduct and intentions as we have worked hard to reach a mutually beneficial agreement while protecting the name and reputation that we have built around our trademarked Big Spoon name.
In the media coverage of the dispute and in what Big Spoon Sauce Co. has posted online, we noticed that only two options have been mentioned as the way forward: taking the lawsuit to court or dropping the suit. A settlement is still an option and is of course our preference. Although we’ve seen inconsistent representations of Big Spoon Sauce Co.’s position in the media, their most recent public statement indicated that they had been committed to settle the matter. It seems a settlement could be a viable option, and we hope they will pursue it.
We have a lot to share, and have broken it up into sections to make it more digestable.
What is the basis of the legal case regarding trademark infringement, and why did we need to reach out to Big Spoon Sauce Co.?
We likely cannot put it better than Deborah Gerhardt, a UNC trademark law professor, who noted in a recently published INDY Week story by Lena Geller, that when two companies use the same trademark in the same or very similar products, there’s a high likelihood that consumers will be confused.
“While Big Spoon Roasters and Big Spoon Sauce Co. have registered trademarks for different goods and services (for Big Spoon Roasters, peanut butter based snack foods, peanut butter based energy bars, peanut butter, and nut butters; for Big Spoon Sauce Co., chili sauce and hot chili pepper sauce), the legal standard is not whether the companies are using the trademarks for the same products, but whether they’re similar enough that consumers could be confused.”
She continued, “if you’re talking about Delta faucets and Delta airplanes, it’s the same mark but the context is so different, people are not likely to be confused.” In the case of this dispute, she says, “the two names are virtually identical, and they’re both for food condiments. It’s similar enough that consumers seeing one could think it comes from the other company.”
“The reason why it’s problematic,” Gerhardt says, “is because, let’s say the California company’s product is not very good, and the North Carolina company’s product is very high quality. If the California company is selling a product that has different qualities or different ingredients, or isn’t that good, it could damage the reputation of the North Carolina company.”
Gerhardt concluded that we (Big Spoon Roasters) have “a strong case” for trademark infringement on the part of Big Spoon Sauce Co.
Why is there confusion?
According to trademark law, the dominant portion of a trademark is the part that consumers are mostly likely to remember and associate with the product. In this case, the dominant portion of our trademark and the brand name used by Big Spoon Sauce is exactly the same: “BIG SPOON.” The terms "Roasters" and "Sauce" are descriptive terms that are not considered part of the dominant portion of the mark that identifies the respective products. In addition, both our nut butters and Big Spoon Sauce Co’s chili crisps are packaged in similar containers with similar hierarchical label designs. Also, their products are considered part of the pantry category, or condiments, exactly like ours and other products in our trademark category. Both of our products are sold in similar channels, like specialty retailers, cafes, and through e-commerce, and—most importantly—in those specialty retailers, pantry products and condiments are typically merchandised in the same aisles, often on the same set of shelves.
Ultimately, the attention that this case has gotten on social media and the communications we have had with customers and retailers has produced additional evidence that there has been confusion between the two brands in the market already, coming not only from our customers and retailers, but also from the supporters of Big Spoon Sauce Co.
We know it is unfortunate to see this kind of dispute play out among small brands and is even worse to see the followers of one brand turn it into an opportunity to make personal attacks and threats. However, if a small brand is not able to protect their mark from another small brand in the same category, what hope is there to defend that brand name and rights against a larger player? A corporation? The trademark system exists for a reason, and it only works if the rules are followed. Big Spoon Sauce Co. filing a trademark application demonstrated that they also wished to benefit from this protection, which is something they can and should be able to do, but with a name that is not already protected.
How Did the Lawsuit Happen?
We cannot speak to Big Spoon Sauce Co.’s motivations or intentions, but the versions of the settlement negotiations they have shared publicly differs from our experience and record of communication. Neither business would be in this situation if Big Spoon Sauce Co. had vetted the name chosen for their business and agreed to reasonable terms during negotiations.
We communicated with Big Spoon Sauce Co. over several months to come to what we thought was an agreement for them to rebrand with a new identity that would no longer infringe upon our protected mark. We have always been sensitive to the challenges of small businesses, particularly those faced by small food businesses, so we offered them flexibility and ample time to exhaust their existing inventory of product packaging bearing the BIG SPOON mark and agreed to pay them money to help defray the costs of a rebrand. When we both agreed to the basic terms of their rebrand, we suggested that they draft the agreement to reflect their perspective and concerns, but they insisted our legal team do this instead.
Our lawyer drafted an agreement that included confidentiality and non-disparagement sections, standard in most such agreements. The draft also included an agreement that specifically states, “both of the terms BIG and SPOON,” or the dominant portion of our protected mark, together could not be used as part of the new brand identity. The confidentiality section was designed to ensure that the terms of the agreement remain confidential to protect both parties. The non-disparagement section stated that both parties agree not to make negative or harmful public statements about each other. These are standard and reasonable parts of any agreement and were open for edits from Big Spoon Sauce Co., as was the entirety of the draft agreement.
Their response to our draft was to redline (remove) both the confidentiality and non-disparagement sections entirely rather than edit them. By removing the confidentiality and non-disparagement clauses, the message we received was that their intention was to disparage us once the agreement was signed and the money changed hands. Most crucially, their response made it clear that, despite saying in our email communications that they would rebrand, they were not willing to rebrand to a name that did not include both terms “Big” and “Spoon,” which is the crux of the issue. Either they misled us from the start of the negotiations, or they had changed their mind. When they took changing their name from Big Spoon off the table, we had no choice but to move forward with the lawsuit in order to protect our mark.
Retaliation and Intimidation
It has been particularly difficult and traumatic for our team to wade through and manage the hate, intimidation, and threats directed at us at the behest of Big Spoon Sauce Co. in response to the trademark infringement suit. On Big Spoon Sauce Co.’s Instagram account, followers were encouraged to take action by targeting our business and our customers. Even individual customers who happened to give us positive reviews have been targeted with intimidation and personal attacks. People shared our personal email addresses on Big Spoon Sauce Co.’s post so that others can join in the harassment, and it’s been so disappointing and saddening to see that Big Spoon Sauce Co. has encouraged and condoned this type of behavior.
Just yesterday, we opened an email that suggested that Megan and I take our own lives. Over the course of my life, two of my friends have died by suicide— this was personal, deeply hurtful, and goes far beyond crossing a line. This is not something that we take lightly.
The efforts to distract from the real story of a legitimate trademark infringement case by portraying us as greedy corporate aggressors could not be further from the truth, and has created an unsafe environment for our team, families, and those who support us.
The massive wave of support we have received from customers, industry peers, and people who have been through similar difficulties has been truly uplifting, but the support has mostly been in the form of personal emails, private messages, phone calls, and notes attached to purchases on our website, because showing such support publicly would just invite more threats and intimidation. We send our genuine thanks and appreciation to all our supporters and people around the world who have connected with us; you have brought sunshine and a recentering on what matters in a dark time for us. We encourage those who believe in us and our right to protect our trademark not to post your support on social media. No one else needs the nasty communications that that we are getting.
Social Media Commenting
Some people have commented on the fact that we have turned off comments on our Instagram page, and we realize that for some this feels like a decision that goes against our efforts to communicate transparently. The reality is that this was a necessary action to protect the well-being of our team. Since Big Spoon Sauce Co. made their first public statement on the lawsuit, encouraging people to reach out, to comment on the perceived bullying, our team has been the target of a coordinated and hateful barrage of messages.
We understand and support a right for people to voice their opinions in public forums, but when we started receiving messages and posts threatening harm, and saying hurtful, untrue, and unfounded things about us and our team, it was clear a line had been crossed. While we appreciate that Lani and Nate want to engage with their supporters and community and understand that there are plenty of other people who would like their voices heard, and that the folks sending the worst messages don't speak for everyone, it's not fair to subject our team to that abuse. Limiting comments to only those we follow was a necessary action to protect our team. Many of the messages we've received have related specifically to the allegations that we are entering the chili crisp category, being a big brand picking on a little one, or the decision to file the lawsuit that were wholly misrepresented in the information shared by Big Spoon Sauce Co.
On the Chili Crisp Category
It is so important to understand that even if we had never contemplated or ever actually make a chili crisp inspired nut butter, we would still be in this exact situation with Big Spoon Sauce Co. for the reasons already mentioned regarding their use of the dominant term BIG SPOON on a condiment sold in our exact channel of trade.
Having said that, every year, we create at least four new nut butter recipes as a part of our seasonal Limited Batch series. Our recipes celebrate culinary traditions from around the world, with examples including our Peach Crumble Peanut & Pecan Butter (Southeast United States), Lum Lum Thai Curry Peanut & Cashew Butter (Thailand), Linzer Cookie Cashew & Almond Butter (Austria), & Chai Spice Peanut & Almond Butter (India). We have been discussing potentially making a savory nut butter collaboration with a chili crisp maker for almost two years as part of this series. This would include dry chili crisp spices in a nut butter base. We are not sure how that has been construed as our “entering the chili crisp market,” or appropriating another culture’s traditions and creations.
The concerns raised by Big Spoon Sauce Co in their public posts about us potentially offering a chili crisp-inspired nut butter does, however, highlight the heart of the matter, that there is a likelihood of confusion in the marketplace between our products if they are both labeled and sold as “Big Spoon.” Our concern has nothing to do with chili crisp or any form of it. Our concern has always been, and continues to be, with Big Spoon Sauce Co’s infringement of our trademark, which was issued in 2012 and has been in use since we sold our first jar in 2011.
Why Have Trademarks at All?
There has been a misleading characterization of Big Spoon Roasters since the lawsuit was filed that we are a large company bullying a smaller company. That is false and frustrating to defend. As Lani, Nate, Megan, and I discussed on a call and multiple emails, we are a fellow small business with similar beginnings, and we are just a bit further down the road than them. That is precisely why we have spent so much time and money to seek a resolution out of court. Had we wanted to sue them, we could have taken that as our first action.
There has been another cohort of people who have shared the frustration of us being a small brand taking this action against another small brand. For those who criticize us for taking action, we understand the desire to have all brands coexist and find success. This is what we want and have always wanted, but the reality is that using the resources to protect our brand and following the rules of enforcing those resources is essential for any business to be able to operate and grow. Again, Big Spoon Sauce Co. filing trademark applications demonstrated that they also want to benefit from trademark protections. If they build a brand around a name that is not already taken, they should be able to defend those rights, and we would be there to help defend them.
*Public Request to Big Spoon Sauce Co.*
We were surprised to see Big Spoon Sauce Co.’s most recent public statement that they had been committed to settle the matter. We were surprised because the settlement negotiations ended when they said they were not willing to stop using both “Big” and “Spoon” in their brand name. As we have stated every way we know how, we never wanted to be in a situation requiring a lawsuit, but we also cannot allow another company to infringe our trademark.
We urge Big Spoon Sauce Co. to come back to a direct dialogue and propose reasonable settlement terms, which must include not using both the terms “Big” and “Spoon” in its brand name. It will also need to include other typical provisions to allow each side to go forward with our respective businesses without disparaging each other. We remain willing to allow time for Big Spoon Sauce Co. to rebrand in a manner that minimizes disruption to its business. We are hopeful for a resolution so we can all move forward and focus on doing the things we love.
- Mark and Megan Overbay, Co-Founders