Cookie Recipe

Cookie diet doctor Sanford Siegals Miami company has filed suit alleging that a former licensee in Boca Raton is violating its trademark.

The case revolves around who legally has the right to use the term the cookie diet to promote weight-loss routines that involve eating low-calorie cookies.

Siegel SM Licensing Corp. claims it has a common law trademark – established when a party starts using a term regularly, even though it’s not officially registered with the U.S. Patent and Trademark Office, said Coral Gables attorney Ur Fischer, who represents the company.

However, Boca Raton-based U.S. Medical Care Holdings said it filed a trademark application for the cookie diet in 2005 and is the first company to affix the term to its product labels, COO Dr. David Klein said.

A Google search for cookie diet returned Klein’s company first under the sponsored links, with Siegel’s company right underneath.

The lawsuit is about more than just financial crumbs. Kleins company does business under Smart for Life Weight Management Centers and has 43 franchised and company-owned locations.

Siegel said he has put more than 500,000 patients of his Miami practice on the cookie diet since 1975. He is launching the product in drug stores and doctor’s offices nationwide, beginning next month.

SMs complaint against U.S. Medical Care and its owner, Dr. Sasson Moulavi, was filed Feb. 5 in U.S. District Court in Miami.

U.S. Medical Care had an agreement to establish franchises to sell the Siegel-branded diet cookie plan from September 2004 until August. Its right to use Siegel’s intellectual property expired in December.

The lawsuit claims that the former franchiser continued to use the term the cookie diet in its advertising, Web site domain names and product packaging in violation of SM Licensings common law trademark, established about 1990.

Fifteen years later, U.S. Medical Care filed a trademark application for the cookie diet in 2005 and is the first company to affix the term to its product labels, COO Klein said.

We sent Dr. Siegal a cease and desist letter several weeks ago, saying that we believed his continued use of the term the cookie diet was causing confusion in the marketplace to consumers, he said. We intend on fighting this in the courtroom.

A common law trademark takes precedence when its established before a registered trademark, said James A. Gale, an intellectual property attorney in the Miami office of Feldman Gale. However, Siegel’s company has to prove the cookie diet has a secondary meaning that consumers associate with his company and not just any diet with cookies, Gale said. That’s why the complaint includes hundreds of pages of media and Web site references to Siegal’s cookie diet.

Siegal could have avoided this costly litigation if he had officially registered the trademark years ago by making a similar secondary meaning argument to the U.S. Patent and Trademark Office, Gale added. A registered trademark is much easier to protect than a common law trademark.

The lawsuit also charges that U.S. Medical Care violated SM Licensings trademarks by using meta tags – invisible source code embedded in Web pages – to make its Web sites appear during searches for Siegel and cookie diet.

For instance, www.togetthin.com, listing the Real Cookie Diet by Smart for Life, shows up in a Google search for Siegal just below Dr. Siegel’s official Web site. However, Siegal isn’t mentioned anywhere in the text of the Smart for Life site.

It is illegal to use someone else’s trademark in a metatag, Fischer said. Gale confirmed that stance.

Another Smart for Life Website violates SM Licensings copyright by posting before and after photos of patients who lost weight on Dr. Siegal’s diet, according to the plaintiff.

SM Licensing is seeking an immediate injunction against U.S. Medical Care using its trademarks, but no hearing for that motion has been set.

Ultimately, the plaintiff wants the defendant to lose weight in the wallet. Fischer said the case could lead to damages based on loss of business from confused customers or revenue collected by the defendant from patients that mistook it for Siegals cookies.