If you saw a portable snack package of Fruity Pebbles or Honey Bunches of Oats under the brand name “OK Go!” on a supermarket shelf, would you think that the rock band OK Go was somehow involved?
That bizarre question is at the center of a new lawsuit filed by cereal giant Post Foods against the power pop band, which is best known for its viral music videos, including a Grammy-winning video for the song “Here It Goes Again.”
In a complaint filed Friday (Jan. 13) in Minnesota federal court, Post said OK Go had been quietly threatening to sue for months, claiming that the company had infringed the trademark rights to the band’s name by launching the new on-the-go packages earlier this month.
“Without resolution by this court, Post will be unfairly forced to continue investing in its new OK GO! brand while under the constant threat of unfounded future litigation by defendants,” the cereal company wrote in its lawsuit.
Post is seeking what’s known as a “declaratory judgment,” meaning a ruling by a judge that says the company did nothing wrong. Post says the trademark rights of a rock band like OK Go don’t extend to an unrelated product like cereal, and that the new cups of Fruity Pebbles and other cereals are clearly marked with Post’s own branding to avoid any confusion.
In a statement to Billboard, the members of OK Go said they’d been surprised to learn of Post’s lawsuit.
“A big corporation chose to steal the name of our band to market disposable plastic cups of sugar to children. That was an unwelcome surprise, to say the least,” the band wrote. “But then they sue US about it? Presumably, the idea is that they can just bully us out of our own name, since they have so much more money to spend on lawyers? I guess that’s often how it works, but hopefully, we’ll be the exception.”
According to Post’s lawsuit, the dispute with OK Go goes back many months — and court records reveal the kind of legal back-and-forth that often precedes such litigation.
Back in September, an attorney for the band sent a cease-and-desist letter to Post, saying that OK Go had been “surprised and alarmed” to see Post’s use of its name on the new products. He claimed the new brand name would “suggest to consumers that OK Go is endorsing Post’s products,” or falsely imply that the cereal company had received permission to use the band’s name on its products.
Citing advertising collaborations with brands like Sony, Mercedes Benz, Google and Chevrolet, the band’s attorney argued that consumers had come to associate the “OK Go” name with consumer products across an array of industries. And he made particular mention that the band had even previously worked with Post itself, releasing a series of promotional videos for Honey Bunches of Oats back in 2011.
“Our client regards this matter with the utmost seriousness and has authorized us to take all steps necessary in any venue to protect its rights,” OK Go’s attorney wrote in the September letter. “If we do not hear from you within 10 days of the date of this letter, we will assume that Post does not wish to resolve this matter amicably.”
A week later, an attorney representing Post responded, saying that the company must “respectfully disagree” with the band’s accusations. The attorney argued that rock music and breakfast cereal were “clearly unrelated” products and that the phrase “OK Go” was merely a common term that had previously been used by many other companies on their products. He also flatly rejected the band’s arguments about its previous work promoting Honey Bunches of Oats.
“Given the length of time that has passed since that limited collaboration over a decade ago, the very small number of views indicated on the YouTube videos you referenced, and the general consuming public’s rather short attention span, it will also have absolutely no bearing on consumer perception of Post’s mark OK GO! used with cereal or cereal-based snacks, and will not lead to any mistaken association with OK Go,” Post’s attorney wrote in the response.
According to Post’s complaint on Friday, the company offered to pay the band as part of a “good faith effort” to resolve the dispute without resorting to litigation, despite its belief that the accusations lacked legal merit. The total figure that Post offered for such a “branding collaboration/co-marketing arrangement” was not disclosed in court documents.
But the food company says OK Go rejected that offer last week and made no counter-proposal, leaving Post with no choice but to file a lawsuit. Citing a “clear threat of potential litigation,” Post wrote that the judge must rule that the company is “free to use the OK GO! Mark.”
The case was filed in federal court in Minnesota, where Post is headquartered. An attorney for Post did not immediately return a request for comment on the lawsuit.
Read the entire lawsuit here: