Susan E. Hollander

Hollander is an intellectual property attorney and Venable LLP partner who assists high-profile brands in preventing dilution of their valuable trademarks. For longtime client Tri Union Seafoods LLC—which does business selling canned tuna bearing the well-known Chicken of the Sea mark—she is the mermaid’s lawyer.

“It’s an iconic logo. It’s a famous brand,” she said.

When competitors step forward to allegedly infringe Chicken of the Sea’s mermaid image, Holland drafts forceful complaints, as she did in federal court in San Francisco regarding rival Otis McAllister Inc., which sells La Sirena brand canned sardines and canned tuna. “In blatant disregard for Chicken of the Sea’s longstanding rights in the mermaid logo, Defendant recently began using a similar mermaid logo on labels for its La Sirena brand canned tuna,” she wrote, noting that until then La Sirena had primarily confined its use of the mermaid to canned sardines.

“Chicken of the Sea had repeatedly warned Defendant of its senior rights, cautioning Defendant not to begin using a mermaid design on canned tuna,” Hollander wrote. Tri-Union Seafoods LLC DBA Chicken of the Sea International v. Otis McAllister Inc., 4:17-cv-06646 (N.D. Cal., filed Nov. 17, 2017).

The complaint alleges federal claims for trademark infringement, unfair competition, trademark dilution plus state claims. Hollander’s complaint takes an exhaustive look at the canned tuna market and its major players, pointing out that the mermaid’s chief rivals are Charlie the Tuna, sold by StarKist, and Bumble Bee’s bee mascot.

“Indeed, a mermaid has been the face of Chicken of the Sea since 1952, and the company has spent millions of dollars in advertising and promotion to insure that the public associates mermaids exclusively with Chicken of the Sea and its canned tuna,” Hollander wrote. She added that brand confusion is the likely outcome of La Sirena’s move, because “consumers are more apt to purchase Defendant’s La Sirena tuna with a mermaid logo because they believe it is made by, is affiliated with, or is a second brand of, Chicken of the Sea.” The case is set for trial in June.

Hollander also represents San Ramon-based 24 Hour Fitness, a chain of gyms, said to be the world’s second largest.

“There’s a lot of enforcement work to make sure people do not try to sneak ‘24 hours’ into their gym trademarks,” she said. “Of course, you can say you’re open 24 hours, but you have to leave fitness out. We are duking it out in more than a dozen trademark infringement or trademark opposition proceedings.”

She said she’s a big fan of Chicken of the Sea tuna fish sandwiches but doesn’t use her other famous client’s facilities. “I’m not a gym rat, though I have friends who are very happy with their 24 Hour Fitness memberships. I ride horses.”

—John Roemer