Original Penguin sues Pudgy Penguins in Florida over trademark use

PEI Licensing, owner of the Original Penguin clothing brand, filed a lawsuit Wednesday in the U.S. District Court for the Southern District of Florida against Pudgy Penguins, alleging trademark infringement, dilution and unfair competition tied to apparel and pending PENGUIN trademark applications.

The complaint asserts Pudgy Penguins has used a “family of penguin trademarks that are confusingly similar” to PEI’s federally registered PENGUIN word mark and penguin design marks. PEI says it first used a penguin design on apparel in 1956 and the PENGUIN word mark as early as 1967.

PEI asked the court to block Pudgy Penguins’ trademark filings, halt sales of products it says are confusingly similar, order the destruction of items likely to cause confusion, and require Pudgy Penguins to disgorge profits from those sales. The complaint also asks the court to direct the U.S. Patent and Trademark Office to reject Pudgy Penguins’ pending applications.

According to the filing, PEI sent a cease-and-desist letter to Pudgy Penguins in October 2023 demanding the company abandon applications to register various PENGUIN marks. The filing includes side-by-side images comparing Original Penguin merchandise with apparel sold under the Pudgy Penguins brand.

Jennifer McGlone, head of legal at Pudgy Penguins, described the lawsuit as “surprising” in a statement and wrote that the companies had been in “productive discussions” to try to resolve the matter privately. She wrote that Pudgy Penguins believes the claims lack merit and that “the trademarks in question are visually distinct and serve entirely different audiences and markets.”

McGlone added that Pudgy Penguins has advanced applications with the USPTO and has received approvals for multiple trademark applications covering the Pudgy Penguins brand. The company’s social account posted a meme implying there is no similarity between the two brands.

The complaint focuses on Pudgy Penguins’ merchandising and trademark filings tied to consumer products rather than the NFT collectibles that launched the Pudgy Penguins brand. The case remains pending in the Southern District of Florida.