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I have always considered myself to be a creative person. Full disclosure: I'm not claiming that I've created anything good, merely that I have created things that exist. Over the years I have made skateboarding movies, played bass and guitar in bands, acted in plays, written and performed sketch comedy, and even acted in an independent (i.e. very low-budget) zombie movie. Unfortunately none of these ever blossomed into a career. I guess it was the classic case of being ahead of your time.

Thankfully these hobbies put me on a path to my current career as an intellectual property attorney. In fact, my first legal venture was obtaining copyrights for my band's debut (and only) album. I had considered law school as an option but I hadn't committed by the time I finished my undergraduate studies. To buy time I signed up for a student work visa and moved to London. Thanks to destiny, dumb luck, or both, I found a position in a law firm specializing in trademark law and brand management. It was my first exposure to the practice of law, and I quickly discovered that I had found my future career.

When I'm not in the office, I spend my time playing my guitar, obsessing over baseball (go Twins!), or talking up a band, movie, or television show that has recently impressed me.

They say one Bad Apple can spoil the bunch. But what can a Happy Apple do? It depends on which one you buy, but you’ll want to make sure you’ve got the right Happy Apple.

One Happy Apples brand involves fresh apples, apple cider, and caramel apples.  The other Happy Apple is a cannabis infused drink. Sure, the names are nearly identical, but does the candy apple company have a viable trademark infringement claim against the cannabis drink company? A recent ruling from the Western District of Washington involving this dispute suggests that brand owners may have an uphill battle enforcing their rights against the expanding cannabis industry.

For your consideration, a sample of the companies’ respective products is shown below.

         

The Happy Apple Company sued Tarukino, LLC (the producer of cannabis beverage) and requested a preliminary injunction. Notwithstanding the fact that both companies were using the nearly identical HAPPY APPLE wording, the court denied the request in an order issued January 9, 2019. In denying the request, the court’s reasoning, if adopted by other courts, could make it more difficult for brand owners to enforce their trademarks against cannabis products.

The court acknowledged that “both products are apple-related but the similarities end there.” When evaluating a claim of infringement, courts rely on a number of factors to determine whether there is a likelihood of confusion. In Washington (part of the Ninth Circuit), the courts follow the Sleekcraft factors.

As part of the analysis, courts look at how similar the marks are as they appear in the marketplace. This means even though the parties use HAPPY APPLES and HAPPY APPLE, the court looks at all of the packaging, including the font used, design elements, presence of house marks or company names, and other information. These facts seemed significant to the decision, as the judge concluded:

While they both contain the words “happy apple” they look markedly different. The mark used by Plaintiffs uses a different font and includes a cartoon of a caramel apple. The product sold by Defendants includes a picture containing two arrows, an apple, and the words “cannabis infused”, similar to a coat of arms.

Notably, the court appears to have only focused on the packaging for the caramel apple. Neither the cider nor the fresh apples include a carton of a candy apple. If I’m being honest though, the cartoon apple on the packaging looks like it may have had a bottle or two of the other Happy Apple.

The court also relied heavily on the significant regulation of cannabis products under Washington state law, reasoning:

cannabis-containing beverages can only be distributed and sold by retail stores licensed and regulated by the Washington State Liquor and Cannabis Board. These retail stores may only sell marijuana, marijuana concentrates, marijuana-infused products, and marijuana paraphernalia. Defendants’ products and Plaintiffs’ products are not likely to be sold in close proximity to each other, and it is unlikely that a purchaser would mistakenly enter a retail store selling marijuana or marijuana-related products and confuse a cannabis-containing apple beverage with the fresh apples, apple cider, or caramel apples sold by Plaintiffs.

At first glance, it seems that the court may be unfairly narrowing the likelihood of confusion as to whether a consumer might confuse the two products. While such a purchase would certainly qualify as consumer confusion, it is not the only type of consumer confusion. Consumer confusion can also occur if a consumer mistakenly believes that there is some type of connection, sponsorship, or other relationship between the Happy Apple cannabis product and the owner of the HAPPY APPLES brand. For example, whether a consumer might mistakenly believe the apples used to make the cannabis beverage were HAPPY APPLES brand apples.

Perhaps the court concluded the highly regulated nature of the industry and the distinctly different channels of trade were simply enough to avoid a likelihood of confusion, especially when comparing how the marks appear in the marketplace.

However, if the highly regulated nature of cannabis products truly carried the day for the defendant, it does not bode well for other trademark owners. All states that have legalized cannabis in any form have maintained strict regulation on how and where such products can be sold. If other courts adopt this court’s analysis, cannabis company defendants arguably begin any trademark infringement lawsuit with a loaded deck.

Of course, this is only a ruling on a preliminary injunction request, not a ruling of non-infringement. It is also possible the court relied on a number of other factors that simply were not referenced in the order. The HAPPY APPLE mark is not necessarily a strong mark, and certainly not well-known like HERSHEY’S or REESE’S. The term APPLE is either generic or descriptive, depending on the context, and HAPPY may not be entitled to a broad scope of protection.

As the cannabis industry continues to grow, there will undoubtedly be many more lawsuits. This is just one of many data points non-cannabis companies must use to determine where to set their trademark enforcement goal posts, and a data point for cannabis companies to use when evaluating new names and trademarks.

With the holiday season half way over, and Christmas less than a week away, you’re running out of time to bring some holiday cheer to those around you. Luckily, Chipotle, Taco Bell, and Jimmy Dean have your back and they’re ready to help you surprise and delight your food-obsessed friends and family this Christmas.

Perhaps your spouse just can’t get enough burritos from Chipotle? Well, how about Chipotle-branded guacamole, salsa, or tin foil wrapping paper on their gifts?

Or maybe your childhood memories are filled with the scent of a hearty breakfast on Christmas morning at your grandparents’ home. I’m sure your grandma or grandpa would be giddy with excitement when their gift comes wrapped in this sausage scented Jimmy Dean wrapping paper.

If your best friend is more into Taco Bell. You could go all out and build a tower of gifts, with guacamole, cheese, and the rest of the ingredients filling your gift stack wrapped from top (tortilla) to bottom (tortilla).

In today’s age of social media and cable cutting, creative marketing efforts like the above could encourage and deepen brand loyalty among consumers. It’s also a whole lot of free advertising as consumers share this content on social media platforms like Twitter, Instagram, and Facebook. In fact, the Taco Bell CrunchWrapping paper apparently reached #16 on Amazon Canada’s Best Sellers list before it sold out, so the preliminary results suggest the campaign was a success. With this success, it would not be surprising to see more brands join in on the fun next year, so keep an eye out next November for 12 feet of high definition Arby’s roast beef!

Video games offer a melting pot of intellectual property: trademark law, copyright law, and even patent law all come together in a delicious mix of intangible property. However, not all video game franchises are equal. Few can claim the same level of longevity, success, and nostalgia as Nintendo’s Mario Brothers series.

Among the most popular titles of the franchise is Mario Kart, a game in which characters from the franchise race each other in go karts. The characters repeat catch phrases, seek out power ups (invincibility, speed, etc.) and cartoonish weapons (banana peels, turtle shells, etc.), all with the singular goal of being atop the podium at the end of race. Over its 25+ years of existence, the game has resulted in significant sales, widespread nostalgia, and, unsurprisingly, numerous attempts from others trying to make money off of the characters. But a recent lawsuit in Japan brought media exposure to what might have been the greatest attempt yet to profit off the franchise: real life go-karting in Mario Brothers costumes in the streets of Tokyo.

How fun is that? From what I can tell, riders aren’t allowed to throw things at each other (thanks a lot, safety laws), but this tour would still be great. The attraction even attracted professional race car drivers. You don’t even need to provide your own costume, they’ve got a ton for you to choose from.

Race car drivers weren’t the only people to discover the tour. Nintendo’s lawyers did, too. I’d like to imagine they participated at least once before suing them, if only under the pretense of “fact development.” Nintendo sued and ultimately prevailed on claims of copyright infringement. The company has to pay Nintendo 10 million yen (about US$89,000) and can no longer hand out Mario Brothers character costumes.

It’s hard to quibble with Nintendo’s actions here. The MariCar company intentionally distributed character costumes in order to attract customers.

But what are Mario Kart fans supposed to do now? Well, there will be an official Super Nintendo World opening at Universal Studios Japan ahead of the 2020 Tokyo Olympics. The theme park will include a Super Mario World featuring Bowser’s castle, Peach’s Castle, and, yes, a “Mario Kart attraction.”

But if you prefer the thrill of participating in likely infringing activities, you can check out the Australia-based MUSHROOM RALLY race event purportedly coming to Denver, soon. Participants will have a chance to battle it out in Las Vegas for the championship race. Ticket prices are yet to be determined and are limited to just 600 participants. I suggest you read the fine print on the refund policy though – just a hunch…

As we move into Week 2 of the NFL, the big clash in North Country is Sunday’s Green Bay Packers – Minnesota Vikings game. All the buzz is whether the second-coming-of-Favre Aaron Rodgers will prevail over the vaunted Vikings defense. But here in my trademark bubble, I’m more interested in the Jacksonville Jaguars versus former Jaguar player Dan Skuta. This isn’t a contract negotiation battle, but instead a dispute over who owns the claimed trademark rights in the word SACKSONVILLE. The dispute is now the subject of a pending opposition at the Trademark Trial and Appeal Board.

In the Notice of Opposition to the team’s application, Skuta claims to have been the first to coin the term “Sacksonville,” back in July of 2015, but his pending application was refused based on a possible likelihood of confusion with the team’s already filed application. He created a Twitter account and hired a graphic designer to create the logo below, which appears on Skuta’s website.

 

In the team’s application to register the claimed #SACKSONVILLE mark, the Jaguars claim a first use date of September 1, 2017.  However, the team has the ability to present evidence of use earlier than the date of first use listed in the application. One article notes that the team has used the phrase as a social media hash tag at least as early as 2013. But in most circumstances, merely using a word as a social media hashtag does not constitute use in commerce.

Unsurprisingly, one local Jacksonville news outlet is skeptical, siding with the team over a “forgettable linebacker . . . who may have been better at anticipating trademark uses than he was at reading offenses.”

It is possible that Skuta may have used the mark in commerce before the team. Skuta hasn’t made his case any easier by including in the logo what appears to be a jaguar skull and the same Jacksonville Jaguar teal color. On top of this, the play on words with “Jacksonville” potentially creates association with the team, too.

It’s a bit of a mess: are there even any trademark rights and, if so, who owns them? It seems the team likely should be the owner, but perhaps they fumbled the rights along the way. We may have to wait for the Trademark Trial and Appeal Board to weight in to see who emerges from the scrum with the ball.

PepsiCo recently made waves with its purchase of SodaStream, but the company is now making news in the food business. This time the news is all about Pepsi’s Frito-Lay division, and its mischief making Chester Cheetah and his crunchy, cheesy, Cheetos brand. Pepsi recently sent a cease and desist letter to World Peas, a manufacturer of healthy-ish snack foods and its recent marketing of Peatos brand snacks.

 

What are Peatos exactly? They’re a crunchy snack food made primarily from peas and lentils, but, Peatos are not intended to be a “health food.” The company describes its mission as making “90% of people eat 10% better, not 10% of people eat 90% better.” The goal appears to be: make a snack that is a little bit better for you without sacrificing flavor. Product quality aside though, is Pepsi correct that the PEATOS mark is confusingly similar to the CHEETOS mark?

Courts consider a variety of factors in evaluating whether someone is infringing another’s trademark: do the marks create similar commercial impressions; are the products at issue competitive, similar, or related; how strong are the marks in terms of meaning and commercial strength; are the goods sold through similar channels of trade (i.e., through the same types of stores); and others. The two factors that tend to play the most prominent role are the similarity of the commercial impressions of the marks and the similarity of the goods.

In the Peatos versus Cheetos dispute, many of the factors would favor Pepsi. The goods are competitive (even if one is a bit healthier), both are sold in the grocery stores, and the CHEETOS mark is an arguably famous and strong mark. But even if every single factor but one were to favor Pepsi’s claim of infringement, it would not be enough if the marks are so dissimilar that no confusion is likely. So what do you think, how similar to Cheetos is Peatos?

The only difference in sound is the initial letter P versus the CH sound. Visually, the marks have a few more differences in letters. As far as I’m aware, neither mark has a defined meaning. The PEATO mark has additional meaning of one its ingredients (Pea).

But what about the overall commercial impression of the marks? What is the impression that Peatos will make in the mind of a consumer? For me, the immediate impression is that the product is a Cheeto made from peas. In fact, I can’t imagine that World Peas came up with the name in any other way other than “What should we call a Cheeto made from peas? Oh! Peatos would be a good pun!”

A likelihood of consumer confusion does not require actual consumer confusion. It also does not require that consumers confuse the products themselves, or that a consumer incorrectly think that Pepsi makes Peatos. A likelihood of confusion exists whenever a consumer might mistakenly believe that there is some type of endorsement, connection, or affiliation between the two parties. Given Pepsi’s recent purchase of SodaStream and the general trend toward healthier consumer choices, is it really that much of a leap to imagine a famous brand of snacks extending into a pea-based version of itself?

Setting aside the similarity in the marks, World Peas is actively drawing a connection between Cheetos and Peatos through use of a tiger and a similar color scheme for its bag and logo. The fact that the actual Peatos products look like Cheetos isn’t likely an issue, but it doesn’t help, especially if Pepsi argues a claim of post-sale confusion.

In addition to all this, World Peas makes explicit Cheetos comparisons on its website. Granted, these comparisons likely qualify for a fair use (although the use of the Cheetos logo may be more than necessary). However, when you know you’ll be poking the tiger, do you really need to pull its tail and poke it in the eye too? If the company truly plans on sticking with the Peatos name, it may have been best to not exacerbate Pepsi’s concerns and use a different colored logo, avoid the tiger on the packaging, and maybe not so aggressively market yourself as a healthier version of Cheetos. While Pepsi may have still come knocking, Pepsi would at least have less ammunition for its claims.

I wouldn’t say this a clear cut case of infringement, but given all these facts, there is at least a colorable claim of infringement . The company must have known it would receive a demand letter regarding the name. Perhaps the plan was to enjoy the free press for its new product and then switch the name, knowing the name change would also be heavily publicized?

Apart of from the potential legal liability, it isn’t a terrible plan, and I’m certainly interested in trying a bag of Peatos. Once I find a bag, I’ll be sure to let you know whether they’re g-r-r-r-r-r-r-r-eat!

Even in July, with the heat of summer still blazing, you can’t get away from ice hockey in Minnesota. However, now that the Vegas Golden Knights have settled their dispute with the U.S. Army, it was starting to look like we were running out of hockey trademark news. Thankfully, the National Hockey League came through at the last second, filing a trademark infringement lawsuit on July 23. At issue is the NHL’s rights in the design of its championship trophy, the Stanley Cup, and the defendants’ sale of allegedly infringing beer mugs shaped like the Stanley Cup.

The defendants comprise companies, purportedly all owned or managed by the same individual, operating primarily under the name “The Hockey Cup LLC.” According to the complaint, the Hockey Cup has been selling unauthorized reproductions of the Stanley Cup as well as counterfeit jerseys. The company even applied to register trademarks for THE CUP HOCKEY. The NHL opposed the applications and, in response, the Hockey Cup counterclaimed to cancel the twelve registrations asserted by the NHL on the grounds of lack of ownership, abandonment, non-use, and fraud. With the gloves now off, the NHL chose to escalate the skirmish and sue the Hockey Cup in the Southern District of New York for trademark infringement, false association, dilution, copyright infringement, and unfair competition.

There is a good chance that the Hockey Cup will also assert its counterclaim for cancellation of the NHL’s registrations in the lawsuit. The counterclaim essentially argues that the NHL does not control the actual, physical Stanley Cup, and therefore the NHL cannot have trademark rights in the design of, or name of, the Stanley Cup. Strangely enough, this part of the argument has some truth to it. Since 1893, the Stanley Cup has been controlled by a pair of trustees. In 1926, the Trustees reached an agreement with the NHL, and the NHL has been the sole organization associated with the cup ever since, with continued permission from the Trustees. If that’s true, the Hockey Cup’s claims appear to be a bit of an underdog in this legal matchup.

But does the Hockey Cup’s sale of beer mugs in the shape of the Stanley Cup create a likelihood of confusion with the NHL? The NHL claims in its complaint that it has sold beer mugs in the shape of the trophy in the past, but none appear to be available at the moment. The NHL is selling Stanley Cup shaped ornaments, paperweights, inflatable trophies, miniature crystal replicas, and, for some reason, a popcorn maker. If we’re sticking with the booze, the NHL is selling a shot glass with a picture of the Stanley Cup. But yet, no beer mugs in the shape of the trophy.

To prevail though, the NHL does not need to show that it has lost sales due to the defendant’s conduct. Instead, there must only be a likelihood of confusion as to source, sponsorship, connection, or affiliation. One plausible argument in support of the NHL’s claim is that consumers will mistakenly assume that the mug has been licensed by the NHL.

In fact, one recent case from the Eleventh Circuit is quite relevant to the dispute. In that case, the Savannah College of Art and Design, Inc. sued an unauthorized online manufacturer and seller of apparel that was selling clothing with the school’s name. Savannah Coll. of Art and Design, Inc. v. Sportswear, Inc., 872 F.3d 1256 (11th Cir. 2017). The school sued, but the school could not establish that it began selling apparel with the school’s name before the defendant. Based on this, the district court concluded that the school’s rights in the mark with respect to education services did not provide it with trademark rights in the name for clothing. The district court granted summary judgement to the defendant.

On appeal, the Eleventh Circuit reversed, relying on precedent involving – you guessed it – hockey:

One of our older trademark cases, Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), controls, as it extends protection for federally-registered service marks to goods. Although Boston Hockey does not explain how or why this is so, it constitutes binding precedent that we are bound to follow.

As the quote suggests, the Eleventh Circuit is not certain that the precedent was rightly decided. In that decision, the NHL and the Boston team sued a manufacturer to prevent the sale of patches featuring team names and logos. The NHL had registered the marks for hockey game entertainment services, but not for any goods. The court noted the decision has been criticized but never overturned. As a result, the Eleventh Circuit remanded to the district court for further proceedings consistent with the Boston Hockey ruling. The NHL—and any other school, sport team, or other organization with an appreciable amount of merchandising—will want to pay attention to the resolution of the case, and consider filing applications to register their marks for valuable, merchandised products.

In the meantime, we’ll watch the ownership dispute play out between the NHL and the Hockey Cup. While it appears to be a longshot, perhaps ownership of the cup will return to the people of Canada, as some prefer (mostly Canadians). Until then, we’ll leave you with the words of Lord Stanley himself, announcing the creation of the Stanley Cup in 1892:

 

On a recent shopping trip, I couldn’t help but notice some interesting brand extensions inside and outside the stores.

My encounter inside involved Burt’s Bees . The brand encompasses a wide variety of lip balms, lotions, cosmetics, and personal body care items. (pets, too). Yet I discovered a new addition to the lineup: Burt’s Bees protein shake powder.

While most cosmetics and lip balm companies don’t make a jump into the nutrition field (a ChapStick shake just doesn’t sound appetizing), Burt’s Bees’ extension seems to make sense. In my mind, I’ve always associated it with an image of healthy, natural products, and nutrition products seem to fit that image.

Outside, I ran into a similar situation in the lawn and garden center: a blast from childhood past:

This seemed a bit further afield than Burt’s Bees. Had my childhood sugary “fruit” drink really expanded into live flowers? After all, the company does sell Hawaiian Punch lip balm.

However, the answer seems to be no. The flowers are a sold by Canadian company Fernlea Flowers. The company has even registered the mark with the U.S. Patent and Trademark Office, without an opposition from Dr. Pepper/Seven Up (the owner of rights in the HAWAIIAN PUNCH mark).

Are flowers sufficiently related to fruit juice and lip balm such that Dr. Pepper should have objected to the use of HAWAIIAN PUNCH for flowers? Generally speaking, I’d say the goods are highly unrelated. Yet the marks are identical, the HAWAIIAN PUNCH mark has been licensed for other non-food goods, and the HAWAIIAN PUNCH mark is arguably famous. Plus, the mark could have been licensed because the flowers are the colors of various flavors of Hawaiian Punch drinks. Are these factors enough to create a likelihood of confusion?

If there isn’t a likelihood of confusion, is there a claim for dilution? This seems more plausible, but would extending protection of HAWAIIAN PUNCH to live plants in this instance effectively give the owner a right in gross to the phrase HAWAIIAN PUNCH? Is that okay for marks that can establish that they are famous? What do you think, was this an enforcement punch worth pulling?

They say you can’t run away from your past, it will eventually catch up to you. Sazerac Brands may have just learned that lesson the hard way, thanks to the Sixth Circuit Court of Appeals.

Sazerac Brands owns rights in the OLD TAYLOR and COLONEL E.H. TAYLOR brands of whiskey (distilled at Sazerac’s Buffalo Trace distillery). It isn’t surprising, then, that Sazerac was not pleased when a new company, Peristyle, began using “Old Taylor” to refer to its in-development distillery in social media and in the press. Sazerac sued Peristyle for trademark infringement, resulting in a multi-year legal battle that ended earlier this month with the Sixth Circuit’s ruling (probably, pending further review).

But back to the history lesson. In 1887, Colonel Edmond Haynes Taylor, Jr.  built the Old Taylor Distillery in Kentucky, one of the most prolific distilleries of its time. It was more like the destination breweries you see today: it was a castle with gardens, pools, turrets, pergolas, and other embellishments that were uncommon at the time.

Prohibition came and sales disappeared. The distillery and the brand changed hands multiple times after World War II. Ultimately, the distillery was shut down in 1972, but Old Taylor brand whiskey continued. Most recently, the rights to the brand were purchased by Sazerac in 2009. The actual distillery became abandoned and run-down. Nature and vandals took their toll, even on the once picturesque pool (seen below, or here for more photos).

It remained this way until 2014, when Peristyle purchased the land with the intent of renovating the grounds and buildings for a new brand of whiskey. However, at the time of renovation, Peristyle had not yet decided on a new name and instead referred to the location as “the Former Old Taylor Distillery” or simply “Old Taylor.” Even though the distillery had been shut down for more than forty years, there was still a 400 foot “Old Taylor Distillery” sign on a warehouse and a “The Old Taylor Distillery Company” sign located at building’s main entrance.

Peristyle informed Sazerac that it intended to market its spirits under a different name than Old Taylor. Yet Sazerac pressed forward with its claims, even after Peristyle announced that its products would be marketed under the brand Castle & Key. Part of Sazerac’s concerns stemmed from Peristyle’s intent to keep the Old Taylor signs on its distillery and the “Old Taylor” name as well as continued references to Old Taylor in marketing and in the press for Castle & Key.

The Sixth Circuit affirmed the district court’s grant of summary judgment to Peristyle, concluding that Peristyle’s display and usage constituted fair use of the Old Taylor trademark. The court reasoned that Peristyle’s use of the name was historical in nature, describing the origins of the distillery and its physical location. After all, the court noted, the building is listed as the “Old Taylor Distillery” on the National Register of Historic Places.

It’s difficult to fault Sazerac for being concerned by Peristyle’s conduct, at least initially. But the court’s decision provides a lesson beyond history: owners of brands with a long lifespan should carefully consider the context in which a third-party is “using” their mark and whether fair use may apply.

Who do you think would win in a fight to the death: a beaver or an alligator? Sure, alligators seem scarier. They’re known for sharp teeth and strong jaws. They even have a 1980 horror movie about them called Alligator (Sidenote: the plot summary makes this sound like a must-see). Beavers? Not so much. Small and furry. They cut down trees. Sure, there was a television series called Angry Beavers, but it was a kids cartoon on Nickelodeon. Those beavers didn’t live in the Chicago sewers feasting on discarded animal carcasses from secret government laboratories testing mutating growth hormones (Again, this Alligator movie sounds like a must-see).

But what if this isn’t just a regular beaver? What if this is a beaver with an entire travel center full of deli stations, gasoline pumps, bathrooms, and over three decades of use? Oh! And did I mention the red baseball cap? It may not sound that scary to you, or alligators in general, but for the Choke Canyon Alligator, the fear might be starting to build. While an alligator likely gets the best of a beaver in the animal kingdom, the courtroom is an entirely different venue.

The animals underlying this dispute are beavers and alligators, but the parties are Buc-ee’s, Ltd., Shepherd Retail, Inc., and Harlow Food, Inc. The plaintiff is Buc-ee’s, the operating of a chain of Buc-ee’s travel stations throughout Texas. The defendants Shepherd Retail and Harlow Food operate a travel center under the name Choke Canyon, also in Texas. The dispute centers around Buc-ee’s claim that Choke Canyon’s design logo is similar to Buc-ee’s logo. A jury was impaneled earlier this week to help decide whether these logos are confusingly similar, but in the meantime, you can put on your juror hat and compare the parties’ logos yourself.

Thoughts? And to finish any potential arguments before they get started, this is an alligator, not a crocodile. Crocodiles can’t stick out their tongues (We’re not just a trademark blog, we’re a science blog, too.)

Here’s how Buc-ee’s summarized the similarity of the marks in the Complaint:

Defendants’ anthropomorphic and cartoon representation of the alligator as shown above in connection with a convenience store copies the most important aspects of the iconic BUC- EE’S Marks. Specifically, besides Defendants’ improper use of a friendly smiling cartoon animal, Defendants have copied the BUC-EE’S Marks with: (i) the use of a black circle encompassing the alligator (compare to the black circle around the beaver), (2) use of a yellow background (compare to the yellow surrounding the beaver), (3) use of the red-colored tongue of the alligator (compare to the red hat on the beaver), (4) prominent use of sharply drawn black edges for the alligator mascots (compare to the sharp crisp black edges defining the beaver, and (5) the use of letters in raised block font in the name “CHOKE CANYON”

This also isn’t the first trademark battle for Buc-ee’s. The beaver has already defeated two chickens (settled out of court):

And a rival (but hatless) beaver (settled out of court):

As a general matter, I think trademark plaintiffs are too easily branded with the label of a “trademark bully,” but this one seems like a stretch.

Granted, I’ve never been in any of either party’s stores. Perhaps the manner in which the marks are advertised adds to the confusion. In fact, Buc-ee’s also claimed that Choke Canyon’s trade dress infringed upon Buc-ee’s trade dress. The layout of a store or restaurant can be protectable trade dress under the Lanham Act. Even if the individual elements may not be protectable (for example, cactus in a Mexican restaurant), the overall selection and arrangement of even unprotectable elements may give rise to protectable trade dress.

Buc-ee’s claimed trade dress for its travel store-restaurant-convenience store-gas station consists of:

(a) consistent use of bell-gabled roof lines;
(b) Use of a red, white, yellow and black color scheme in store signage;
(c) Use of stone siding on the exterior of the store;
(d) Consistent use of a specific and distinctive fountain drink set up in the interior of the stores;
(e) In-store computer ordering kiosks;
(f) Horse-shoe shaped in-store carving stations;
(g) Open counter deli stations;
(h) Freshly prepared signature food choices;
(i) Consistent, prominent use of the BUC-EE’S Marks in signage above and on the products offered for sale;
(j) Large square footage;
(k) Numerous fuel pumps;
(l) Abundant and oversized parking spaces;
(m) Oversized bathrooms;
(n) A multitude of cashier stations;
(o) Entrances from three of the four sides of the building.
(p) Antique-looking displays;
(q) Country-themed signage; and
(r) Khaki paint colors.

I’m no expert in convenience stores, but most of the elements seem like generic elements of a travel center, restaurant, or convenience store. The antique and country themed signage is not as much of a required element for these types of store, but it hardly seems unique for a convenience store or gas station to have a country theme. Like the claim of trademark infringement based on the use of a cartoon character with a hat, I also have doubts as to the success of the trade dress infringement.

But is the combination of the two enough to nudge these claims over the edge into potential infringement? Based on publicly available information, the best I see from this case is that Choke Canyon may make consumers think of Buc-ee’s stores and beaver, but consumers dont’ seem likely to assume that that there is a connection between the two. While it can be a fine line, trademark law is pretty consistent that merely “calling to mind” is insufficient to establish trademark infringement. There must instead be a possibility of consumer confusion as to source, sponsorship, or some other connection.

It is possible additional facts will come out during trial to bolster Buc-ee’s claims. Perhaps there really was a pattern of intentional copying, from the yellow background of the circle logo, to the store layout, down to individual products being offered, like the purportedly famous “Beaver Nuggets” (aka, caramel corn). Stay posted for future updates as the trial proceeds and ends. We’ll also keep a lookout for comments from our neighbor to the east, the other cartoon Bucky:

 

 

Legal departments sometimes get a bad reputation for saying “no” too often. A “no” from legal is particularly hard to stomach when you think the potential legal risk is farfetched. In this dispute, Wal-Mart must have decided that there was no way a competitor could own the basic word BACKYARD for grills and grilling accessories. However, after some discovery and a motion for summary judgment, Wal-Mart was left holding a tab for $34 million in damages, costs, and attorney’s fees. Thankfully for Wal-Mart, the Fourth Circuit just issued a decision vacating the award and the grant of summary judgment.

The plaintiff is Variety Stores, Inc., a regional retail chain in the southeast that sells lawn, garden, and grilling products. The company owns a registration for THE BACKYARD for tail store services and has also used variations of the mark such as BACKYARD and BACKYARD BBQ for grilling products. One of their advertisements is included below.

 

About 20 years after Variety’s first use, Wal-Mart decided to develop an in-house line of grilling products. During the clearance search for potential names like BACKYARD BARBECUE and BACKYARD BBQ, Wal-Mart’s in-house legal group identified Variety’s prior registration and advised the business team that Variety’s registration could pose a problem. Wal-Mart decided to go with BACKYARD GRILL, filed an application to register the mark with the US Patent and Trademark Office, and began selling products, like the ones below.

At the district court, Variety prevailed on for summary judgment. In evaluating the likelihood of confusion factors, the district court concluded :

  • Wal-Mart intended to create confusion because Wal-Mart moved forward with the name despite the legal department’s concerns;
  • Variety’s mark was strong because of large numbers of sales and advertising expense, the court declined to give any weight to Wal-Mart’s evidence of dozens of third-parties using variations of BACKYARD with grilling products;
  • The grilling products were competitive;
  • The two marks – BACKYARD GRILL and BACKYARD (or BACKYARD BBQ) – were nearly identical; and
  • That Wal-Mart’s consumer surveys regarding the absence of confusion were faulty and should be given little weight.

The court concluded that the infringement was willful and awarded $32.5 million in profits and $1.5 million in attorney’s fees.

The Fourth Circuit viewed the evidence differently. Because Wal-Mart did not appeal the district court’s findings with respect to all of the likelihood of confusion factors, the court affirmed the decision with respect to some of the factors. Instead, Wal-Mart appealed the court’s findings on the most important factors: the strength of the plaintiff’s mark (often considered “paramount” by the Fourth Circuit); the similarity of the marks; the defendant’s intent; and the presence or absence of actual confusion.

In reviewing the strength of the mark, the Fourth Circuit concluded that Variety’s BACKYARD marks were “conceptually weak,” but that there was a material dispute as to whether the mark had commercial strength.  The court also concluded that a jury could conclude that the marks were dissimilar in light of the design features and the greater visual emphasis on GRILL. With respect to intent, the court noted that the jury could conclude that Wal-Mart intended to avoid confusion by not pursuing the specific names rejected by the legal department (“Backyard Barbecue” and “Backyard BBQ”) and instead choosing “Backyard Grill.” Finally, the court concluded that the district court improperly rejected Wal-Mart’s survey evidence, noting the district court improperly weighed the evidence at the summary judgment stage. As a result, the court vacated the grant of summary judgment and the monetary awards.

Will Wal-Mart prevail at trial? The Fourth Circuit’s analysis certainly suggests Wal-Mart may have the conceptual weakness of Variety’s BACKYARD marks. It seems like the case is ripe for settlement, but it Variety may have an unreasonably high demand, given the district court previously awarded $34 million. Given that us Minneapolitans are going to hit the 70s today (just weeks from a historic April blizzard), I’m comfortable waiting this one out in my own backyard. Let’s just hope we get an answer before the snow returns.