Marshall Field’s vs. Mrs. Fields in Name Wars : Retailer and Chocolate Chip Maven Join Long List of Trademark Battles

Marshall Field’s of department store fame is upset with Mrs. Fields of cookie fame.

Claiming that use of the Fields name “is likely to cause confusion or to cause mistake or to deceive the public,” Marshall Field & Co. has asked the government to cancel Mrs. Fields Cookies’ trademark registrations.

Debbi Fields on Thursday expressed “surprise and disappointment,” while a Marshall Field spokesman said that Mrs. Fields officials started the dispute.

The tempest in a cookie jar is the latest addition to the long list of disputes by companies that jealously guard their good names, with mixed results.

Coca-Cola and Xerox for years have battled to keep their namesake products from becoming generic terms for colas or copiers. McDonald’s went after McSleep, McTravel and McBagel, among others. Monopoly lost a challenge to Anti-Monopoly. And Toys R Us could be nicknamed Lawsuits R Us.

In challenging the trademarks, Marshall Field also said the script-style logo employed by the Park City, Utah, cookie company is “confusingly similar” to the script style of Marshall Field’s logo.

Debbi Fields said in a statement Thursday that the challenge in the U.S. Patent and Trademark Office from Marshall Field, a Chicago subsidiary of Batus Inc., came “without warning and without any previous complaint.

“Our name is our most important asset,” said Fields, who opened her first store 11 years ago in Palo Alto.

“We have built our reputation under the Mrs. Fields Cookies trademark through hard work and dedication to quality. We will defend our name to the best of our ability,” she said.

Marshall Field spokesman Paul Costello said Mrs. Fields Cookies started the whole thing early last year when it objected, although never formally, to the retailer’s plan to name a new line of private label apparel “Field’s Choice.”

During discussions, Marshall Field learned that Mrs. Fields planned a line of clothing and the retailer objected, he said.

But Mrs. Fields lawyers refused to discuss the trademarks further, and Marshall Field decided that it had no choice but to file the cancellation petitions last June, Costello said.

“We believe their name is encroaching on what is 136 years of tradition at Marshall Field,” he said. “Our opposition is not to the use of Mrs. Fields Cookies on any bakery products. If they move to other goods, we feel the use of the Fields name is going to create confusion for the customer.

“They opened the cookie jar first,” Costello said. “If there is any cookie monster, it’s Mrs. Fields’ lawyers.”

Mrs. Fields corporate counsel Edward Clissord said the companies traded letters but “I am not aware of any contact from their legal counsel that was not returned. . . . This (the trademark cancellation petitions) is their response to our letter.”

Mrs. Fields must now file an answer and the matter will be decided by the patent office, said Rany Simms, a board member of the office’s Trademark Trial and Appeal Board.

Trademark lawyer Arthur Greenbaum said companies with trademarks “tend to be like jealous parents. They don’t like people to come too close to their babies.

“If you own a trademark, it’s a very valuable corporate asset, sometimes the most valuable asset that a corporation has,” said Greenbaum, who also is an adjunct professor of trademark law at New York University Law School. “You have to protect it, and a trademark is very fragile.”

McDonald’s has been an aggressive defender of its name. It filed suit against a Chicago discount travel agency called McTravel Travel Services in December.

Quality International announced the McSleep chain of discount hotels in September and shortly after filed suit against McDonald’s, which “was rather outspoken against our using the Mc modifier in the name,” spokeswoman Susan Dynerman said. “Our contention is we’re not in the food industry and the likelihood of confusion is very small.

McDonald’s spokesman John Onoda said the Oak Brook, Ill., company is “just opposed to people either capitalizing on our work or even more importantly getting our customers upset because they’re expecting McDonald’s quality and don’t get it.”

Toys R Us is another company that is vigilant in challenging similar names, as Lamps R Us, Films R Us, Gals R Us and dozens of others have discovered.

The Rochelle Park, N.J., company ran into trouble itself a few years ago when the city of Cerritos decided that the backward “R” was a bad example for children. But the City Council reversed itself in 1981 and allowed the toy seller to revert to its reversed letter.