Dec. 21, 2013 — -- The Canadian hummus maker behind Hanes Hummus says he refuses to shut down his small business after Hanesbrands Inc., the underwear manufacturer, threatened to sue for trademark violation and demanded that he destroy his products.
The difference between underwear and hummus may be as vast as the distance between Hanesbrands' headquarters in Winston-Salem, N.C., and the food business that Yohannes Petros built in the city of Saskatoon, in Saskatchewan, Canada, five years ago.
But earlier this month, the gulf was closed, just like the plastic container sealing his hummus products when Petros received a two-page letter from Hanes' legal department.
The letter said Hanesbrands Inc. objects to Petros' use of the mark Hanes Hummus in his application to register the name in the U.S. and Canada. The company required a response by Dec. 16 in its request to "cease and desist from all use of the mark Hanes Hummus" and withdraw its pending trademark applications.
"I was shocked," Petros, 38, told ABCNews.com, explaining that the name of his company came from his nickname, Hanes, which is short for Yohannes. "Our logos don't look the same, the spelling and font are different."
In response, Petros' attorney, Nathan Dooley, wrote a three-page letter to Hanesbrands with 36 pages of supporting case law saying he disagrees with Hanesbrands' conclusion that consumers will confuse the hummus maker with the apparel brand.
"I was not aware that HBI [Hanesbrands Inc.] was in the business of manufacturing and selling hummus. In fact, I am confident that HBI is not in the food production business at all, let alone the production of fine and tasty hummus of the type manufactured and sold by Hanes Hummus," Dooley writes.
"I was not aware that HBI's T-shirts were edible, made with chick peas, lemon or garlic," Dooley adds.
Hanesbrands did not respond to a request for comment, and the company has seemingly remained silent to other media outlets. Petros and Dooley have not yet heard a response from the company.
Dooley holds back no punches, writing to Hanes, "It is safe to assume that you have done no research whatsoever" and "If you had done that research, you would not have sent the letter because, in reality, no rational person who is familiar with Hanes Hummus could possibly allege any confusion between Hanes Hummus and HBI's Mark or HBI's product."
Petros said he hopes Hanesbrands chooses to pick a fight with someone else. And in the meantime, he said at least one major potential distributor has delayed its business with Petros because of the threat by Hanesbrands.
"I can't compete with them financially. They have thousands of staff, I have four," he said of Hanesbrands Inc.
Kevin Smith, an attorney with Sughrue Mion in Washington, D.C., who is not involved in this case, said surnames like Hanes can be protected only after they acquire distinctiveness as a source identifier of a product or service.
"There is no doubt Hanes has acquired secondary meaning for apparel, but extending that to food products would be, in my opinion, very hard to prove," Smith, who specializes in intellectual property, said.
"If I wanted to pick a side in this dispute, based solely on the merits, I'm siding with Mr. Petros. However, as we all know, sometimes the 'economic theory of law' comes into play, and when that happens, it seems that deeper pockets usually prevail," Smith said.