– John Reinan, a Minneapolis journalist and recovering marketer
When news broke a couple months ago that the “gentlemen’s club” Spearmint Rhino would be opening a downtown Minneapolis branch on Hennepin Avenue, I joked on Twitter that I should open a club down the street and call it Menthol Hippo.
OK, so I’m not really getting into the strip club business. But the notion did start me wondering whether there would be any trademark implications in making such a move. How much latitude is allowed in playing off the naming concept of an established brand? Could someone make a naked attempt to profit off the Spearmint Rhino’s established mark?
The answer appears to be: probably not. Courts have consistently ruled against competitors who create marks that are associative of or parallel to an established mark, even if the marks are dissimilar from an appearance or sound perspective. A few examples:
- Play-Doh vs. Fundough: The U.S. Court of Appeals for the Federal Circuit reversed a Trademark Trial and Appeal Board decision and held that Fundough was confusingly similar to Play-Doh. “After earning fame, a mark benefits not only its owner, but the consumers who rely on the symbol to identify the source of a desired product,” the court wrote. “Both the mark’s fame and the consumer’s trust in that symbol, however, are subject to exploitation by free riders.”
- Downtowner vs. Uptowner. In this case, the TTAB found the terms were likely to confuse consumers and refused the defendant the right to register its mark. This is a decision that every trademark attorney knows, but one that’s likely to puzzle a layman. Holding that “Downtowner” and “Uptowner” are likely to be confused seems to me about the same as claiming that “Left” and “Right,” or “Black” and “White,” are confusingly associative terms.
- Mr. Clean vs. Mr. Stain. The U.S. Court of Customs and Patent Appeals held that use of the courtesy title “Mr.,” coupled with a word associated with cleaning, was likely to cause consumer confusion.
Given these decisions, I have my doubts that a court would uphold a trademark case in favor of the hypothetical Menthol Hippo. Thus, patrons of Minneapolis’ new Spearmint Rhino can relax, knowing that the ladies taking off their clothes are doing so in good faith, rather than as trademark infringers.