PEI Licensing, which operates the Original Penguin brand, alleged that Pudgy Penguins’ “unauthorized use and attempted registration of various Penguin word and design trademarks” constitutes a violation of laws designed to protect fair competition and trade practices.
The firm, which has been using a penguin design on apparel since at least 1956 and a penguin word mark since 1967, claims that the nascent crypto brand’s conduct “causes damage and irreparable injury to PEI, and to its goodwill and business reputation.”
“[Pudgy Penguins’] use of defendant’s marks is likely to mislead, deceive, and confuse the purchasing public and the trade,” the suit reads. “It is likely that consumers will mistakenly believe that defendant is connected, associated, or in some way affiliated with PEI, when in fact no such connection, association, or affiliation exists.”
To back its claims, the firm provided examples of “immediate similarities” in its apparel and headwear side-by-side with those offered by Pudgy Penguins.
Also noted in the suit is the Pudgy Penguins application to register trademarks for phrases like “I am my penguin and my penguin is me,” and “Pengu Nation,” which the brand aimed to use on the same types of goods that PEI would utilize its own penguin trademarks.
“These goods and services are identical to those with which PEI uses its Penguin marks and nearly identical to those for which PEI owns registrations,” the suit reads.
While the suit was just filed on March 4, PEI said it sent Pudgy Penguins a cease-and-desist letter regarding the infringement as early as October 20, 2023. It later filed opposition notices to at least two of the Pudgy Penguins applications with the United States Trademark and Patent Office in 2024, according to the suit.
“Following PEI’s cease-and-desist letter and PEI’s oppositions, [Pudgy Penguins] continued to use defendant’s marks in commerce in connection with apparel and online sales of apparel, and did not abandon defendant’s applications with the USPTO,” it reads.
The firm suggested that Pudgy Penguins’ continued use of its marks on apparel and other products are “willful and intentional acts intended to trade on the reputation and goodwill of PEI.”
As a result of its claims, PEI has requested monetary relief of all profits from Pudgy Penguins sales of items using similar marks, that its applications with the USPTO be immediately rejected, and that all products in the custody of the crypto brand that bear confusion with PEI’s marks be rounded up and destroyed.
Representatives for Pudgy Penguins and the attorneys for PEI Licensing did not immediately respond to Decrypt’s requests for comment.
