Wal-Mart fights to keep the smiley face
Retail giant says symbol personifies its price-reducing policy, but London-based firm says it secured rights years ago.

NEW YORK (CNNMoney.com) -- The ubiquitous yellow happy face is at the center of an angry battle between Wal-Mart Stores and a company owned by a French family, according to a report Wednesday.

London-based SmileyWorld first registered rights to the symbol with the French trademark authorities in October 1971, but the battle with Wal-Mart (Charts) didn't begin until SmileyWorld filed for a U.S. trademark in 1997 for the exclusive right to commercial use and licensing of the term "smiley" in conjunction with the face logo, the International Herald Tribune reported.

Wal-Mart has photographs of smiley faces in its stores dating back to 1996.

"A prehistoric man probably invented the smiley face in some cave, but I certainly was the first to register it as a trademark," said Franklin Loufrani, who said he initially registered the design, according to the newspaper.

"When it comes to commercial use, registration is what counts."

However, unlike most countries in Europe and Asia, the U.S. operates under a system in which being the first to register a trademark bears less weight than being the first to exploit a symbol commercially, Burkhart Goebel, the global head of the intellectual property practice at the law firm Lovells, told the newspaper.

"Here in the U.S., we consider how heavily a trademark is used, and that would give SmileyWorld a big uphill battle," Marc E. Ackerman, a New York-based partner at the White & Case law firm and a specialist in U.S. trademark law, told the newspaper.

Wal-Mart filed a notice of opposition to SmileyWorld's trademark application and then filed a separate application to trademark the smiley, the newspaper said.

In response, SmileyWorld filed a notice of opposition to Wal-Mart's application on the grounds that its own attempt to trademark the face had been rejected.

Both parties say they expect victory when the United States Patent and Trademark Office rules on the case this summer, the newspaper said.


Related: Wal-Mart's weak sales pressure profitsTop of page

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