PEI Licensing, the company behind the clothing brand Original Penguin, has filed a federal lawsuit against NFT project Pudgy Penguins, alleging trademark infringement, dilution, and unfair competition over the NFT brand’s apparel merchandise.
The suit was filed Wednesday in a Florida federal court. PEI’s complaint centers on Pudgy Penguins’ clothing line, which it claims uses a “family of penguin trademarks that are confusingly similar” to PEI’s registered marks.
A Trademark Dispute Decades in the Making
PEI argues its claim runs deep. The company states it first used the “PENGUIN word mark at least as early as 1967” and placed a penguin design on apparel as far back as 1956. On that timeline, Original Penguin predates the NFT industry by several decades.
PEI’s complaint alleges that Pudgy Penguins’ “unauthorized use and attempted registration of various PENGUIN word and design trademarks in connection with apparel and related goods and services” directly conflicts with its federally registered marks. The company is asking the court to direct the USPTO to reject Pudgy Penguins’ pending trademark applications outright.
PEI also wants Pudgy Penguins ordered to destroy any products the court finds likely to cause consumer confusion, and is seeking all profits generated from the sale of those products.
A Cease and Desist That Went Unanswered
This is not the first time PEI raised the issue. The company sent Pudgy Penguins a cease and desist letter in October 2023, demanding it pull allegedly infringing products and abandon its USPTO applications. The lawsuit implies that demand did not produce a satisfactory resolution.
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PEI framed the situation in its complaint as Pudgy Penguins having “misappropriated valuable property rights” in a way “likely to cause confusion or mistake, or to deceive members of the consuming public.”
Pudgy Penguins Pushes Back
Pudgy Penguins’ legal chief, Jennifer McGlone, told reporters the company “was surprised by the action, particularly as both parties had been engaged in productive discussions to resolve this matter privately.”
McGlone disputed PEI’s central argument. “The trademarks in question are visually distinct and serve entirely different audiences and markets,” she said, adding that Pudgy Penguins had already secured multiple trademark application approvals from the USPTO covering its brand and related marks.
“We have the utmost confidence that we will prevail,” McGlone said.
Pudgy Penguins also took a lighter approach on social media, posting a meme on its X account implying no meaningful similarity exists between the two brands.
What the Court Will Weigh
The core legal question is whether consumers could reasonably confuse Pudgy Penguins’ apparel with Original Penguin’s products. McGlone’s argument that the two brands serve “entirely different audiences” may carry weight, but PEI’s long-established registration and its existing USPTO approvals give it a credible foundation to contest new applications in the same category.
The fact that the USPTO has already approved some of Pudgy Penguins’ applications complicates PEI’s path to a full remedy, though the Florida court could still instruct the agency to revisit those decisions.
Disclaimer: The information provided in this article is for educational and informational purposes only and does not constitute financial or investment advice.
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