The trademark ST. ROCH MARKET is at the heart of a dispute in New Orleans (aka NOLA).  The City of New Orleans is battling in court with the current lessee of the building associated with the trademark.

ROCH MARKET has been associated with a popular market in New Orleans since 1875. Prior to Hurricane Katrina, the market sold fresh seafood. After begin devastated by the hurricane, the City pumped over $3.2 million dollars to transform the place into a food hall with vendors selling seafood, confections, coffee, alcoholic drinks, streetfood, and other food.  Renowned food expert ZAGAT states that it is “An absolute must visit.”  I intend to do so when I visit my friend in NOLA this fall.

Following the renovation, Bayou Secret, LLC leased the building to operate a full service neighborhood restaurant with multiple vendors in a stalls concept.   The company’s sole member Helpful Hound, LLC applied to register the ST. ROCH MARKET mark in April 2017 in connection with food kiosk services and retail vending stand services (Bayou Secret, LLC, and Helpful Hound, LLC and certain individuals associated with the entitityes will collectively be referred to as the “Bayou Secret Parties”).  Because the term ST. ROCH MARKET is descriptive of an actual place, the mark could not be registered on the Principal Register of the United States Patent and Trademark Office.  However, registration for the mark was secured on the Supplemental Register at U.S. Reg. No. 5,293,244 based on the mark’s secondary meaning.

The Bayou Secret Parties launched a similar food hall in Miami in April 2018 and planned to expand into Chicago and Nashville.  Within days of each other in April 2018, the City of NOLA and Bayou Secret Parties filed lawsuits against each other.  The Court consolidated the two cases which involve allegations that Bayou Secret Parties infringed the City of NOLA’s trademark, that the famous trademark was being diluted, among others.

The City of NOLA also filed its own application for the ST. ROCH MARKET in April 2018 in connection with the leasing and management of space for food and drink vendors in a public market at Ser. No. 87/890,988.

In August, the City of NOLA and its management company (NOBC) secured a preliminary injunction that barred the Bayou Secret Parties from using the ST. ROCH MARKET mark for food hall locations other than in NOLA and its newly opened food hall in Miami.

The Bayou Secret Parties brought a motion to dismiss on various grounds.  The City of NOLA defeated the motion with the exception of having its claim for trademark dilution dismissed.  The court found the allegation that the mark “is widely recognized by the general consuming public of the United States” was merely conclusory.

Do you think the EATALY® mark associated with food halls would fare better?  (See U.S. Ser. Nos. 3,065,012; 3,567,939).  It might.  The mark is associated with the well known food halls located near the iconic Flatiron building in New York, downtown Chicago and other locations.

Significantly, famous chef Mario Batali is a partner with the Italian owner of the EATALY mark that was first used in Turin, Italy for a food and wine market before traveling to the United States.

Over the years, we’ve written much about trademark bullying. When the mantle fits, and when it doesn’t. When a brand has a realistic view of its rights, and when the claimed scope is bloated.

We’ve never before written about “Ruby Tuesday,” neither the Rolling Stones’ song nor the struggling restaurant chain, until now — and both at the same time, so thank you Techdirt.

As reported by Munchies, MusicFeeds, and Timothy Geigner of Techdirt, the Ruby Tuesday restaurant chain is threatening trademark litigation against an Australian band, Ruby Tuesdays.

In a twist of double irony, Techdirt hangs the pejorative “trademark bully” name on Ruby Tuesday, for copying the Rolling Stones’ song title and then bullying an Australian band from using it too.

While the reported facts are incomplete and insufficient for judging the merits, one of the lines from the restaurant chain’s demand letter caught my eye, as it appears to impute bad faith:

“[T]he knowing adoption of a mark intending to play off a well-established mark is among the most egregious of trademark violations, warranting courts to apply the harshest of consequences.”

If you’re humming to the lyrics “yesterday don’t matter if it’s gone,” please still consider reviewing an early blog post gem about imputing bad faith, When Intent Matters in Trademark Matters:

“One of the unfortunate aspects of trademark practice is the permission that exists in the law to challenge the motives and intentions of people.”

“[T]his permission is frequently abused . . . when the strength of a case doesn’t seem like enough without injecting an unhealthy dose of emotion into the matter.”

“Even the pejorative “trademark bully” label . . . garners public sympathy while imputing evil intentions to the trademark owner aiming to enforce its rights.”

“Less emotion and more objective facts should drive decisions on the question of likely confusion. If a case screams bad faith based on the objective facts, fine, make the case, but recognize this is likely a rare case.”

“Imputing motives and intentions to people is a messy, dangerous, and emotional business, trademark types should honor the law’s permission to to explore proof of bad faith intent, but not abuse it.”

In other words, initial demand letters shouldn’t attack motives, instead objective, unlawful actions.

And, those tempted to hang the pejorative trademark bully mantle before knowing the facts and law should pause and recognize that hanging the name and mantle also attacks motives.

Having said that, brands, when you really do overreach there are consequences.

Keep in mind, you might just find the infamous trademark bully mantle hanging around your neck, whether the actual merits of the facts and law warrant it or not.

Ain’t life unkind?

Goodbye, Ruby Tuesday, in more ways than one . . . .

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?

Recently, we have been covering updates from a trademark infringement, dilution, and unfair competition action between Buc-ee’s and Choke Canyon, two rival Texas convenience stores with endless rows of gas pumps and checkout lanes (everything’s bigger in Texas, you know; even gas stations). About a month ago, a Texas jury found that the Choke Canyon alligator logo infringes on Buc-ee’s beaver logo:

But as I pointed out when covering the jury’s verdict, it wasn’t clear exactly why these two logos are confusingly similar and to what extent. Could it be the fact that both of the logos contain cartoon animals, who wear hats, who face right, who are smiling, who have red tongues, against a yellow-ish background? Some combination of these features? Additional features? The jury’s verdict doesn’t say; the jury only decided that the Choke Canyon logo infringed, but they weren’t asked to explain why.

However, the jury did send one note to the judge while deliberating, giving some clue as to infringement. In that note, the jury asked, “Does the logo to be considered by the jury in rendering an infringement judgment include a version without words?” To which the Judge responded, “Yes.” Not much insight, but at least we know the jury did not focus on Choke Canyon’s circular ribbon.

The reasons for the finding of infringement often have considerable implications. After such a finding, typically the prevailing trademark owner desires injunctive relief (in addition to damages) against the infringer–in the form of a court order prohibiting the infringer from using the too-similar mark. That form of equitable relief cannot be determined by a jury and has to come from the judge. Still, it seems like it might be useful for the judge, in crafting the injunction, to know why the jury felt the marks were so similar as to create customer confusion. This intuition has recently come to bear as the litigation between Buc-ee’s and Choke Canyon has progressed past trial.

Earlier this week, Buc-ee’s moved for a permanent injunction against Choke Canyon (you can read the motion here). Buc-ee’s seeks a permanent injunction barring Choke Canyon’s use of a whole host of similar logos, which were part of a package of example uses submitted to the jury and sampled below:

Buc-ee’s says that Choke Canyon’s proposed injunction is not expansive enough because it does not include or cover any of the black and white logos, only the colorful ones. Buc-ee’s says it “fought tooth and nail”–great imagery, given that it is represented by a beaver mascot–to obtain the finding of infringement of all marks, regardless of whether they include color. But the color similarities (the red tongues and yellow backgrounds) seem pretty important in the context of an infringement battle that otherwise comes down to smiling beaver versus a thumbs-up alligator.

Even though the jury may have technically considered all of the examples provided by Buc-ee’s, an injunction is an equitable remedy, and the Lanham Act (15 U.S.C. §1116) provides that courts shall issue injunctions “according to the principles of equity and upon such terms as the court may deem reasonable.” As part of this inquiry, courts consider (1) whether the trademark owner has suffered irreparable injury, (2) whether damages are adequate to compensate for the injury, (3) whether, considering the balance of hardships between the trademark owner and infringer, the requested relief is warranted, and (4) whether the public interest would be disserved by a permanent injunction. Courts frequently grant only limited or qualified injunctions and tailor them to the facts of the case, sometimes by restricting certain formats and locations and requiring disclaimers or corrective advertising.

This is all to say that the scope of an injunction in this case and others depends on the circumstances and the court’s view of what is equitable and reasonable–a flexible standard. In trademark, courts focus on what relief is necessary to remedy and prevent consumer confusion, as well as the potential effects an injunction would have on lawful competition–an important factor that should not be overlooked in this case (perhaps not only as to the parties, but also as to the precedent the court might set generally). What do you think that might be? Leave a thought in the comments below.

— Jessica Gutierrez Alm, Attorney

A dog toy display at a local pet store caught my attention recently.

I did a double take on seeing the familiar fonts, coloring, and packaging.  Not long after, I happened to find these at a different pet store.

Once again, the familiar labels, coloring, and bottle designs caught my attention.

While certainly reminiscent of the actual brands, these all appear to be clear examples of parody.  The Chewy Vuiton case is particularly instructive here.  In that case, Louis Vuitton sued dog toy manufacturer Haute Diggity Dog for trademark infringement and dilution over a Louis Vuitton-themed dog toy.

The court held that the dog toy was indeed a successful parody, and Haute Diggity’s use of CHEWY VUITON did not constitute infringement or dilute the Louis Vuitton trademark rights.  In analyzing Haute Diggity’s parody defense, the court defined a parody as a work that (1) references the original/famous brand, (2) but makes clear that the work is not the original/famous brand, and (3) communicates some articulable element of satire, ridicule, joking, or amusement.  While recognizing the similarities between the dog toy and Louis Vuitton’s designer bags, the court also articulated several differences.  For example, the court highlighted that the dog toy is smaller, plush, and inexpensive—clear distinctions over LV purses.  The court characterized the dog toys as “simplified and crude,” rather than the “detailed and distinguished” purses.

While Jose Perro, Dr. Pooper, HeinieSniff’n and the others I recently stumbled on are probably parodies as well, they beg the question of where the parody line falls.  The Chewy Vuiton court made clear that there must be some readily identifiable differences between the original mark and the parodied work.  But how many differences are enough?

Consider the Snif peanut butter jar, for example.  While the words and the items themselves are different, there seems to be some room for suggested association between peanut butter and dog toys.  Peanut butter is frequently used as a dog treat by many owners.  Surely a dog owner might believe Jif peanut butter had entered the dog toy market.

What do you think?  Are all of these clear cases of parody like the Chewy Vuiton toys?

Although perhaps the most important question is: why are there so many dog toy parodies?

About a week ago, we reported on an interesting case out of the Southern District of Texas involving two competing convenience stores with cartoon animal mascots: Buc-ee’s (a beaver) and Choke Canyon (an alligator).

As someone who has personally visited Buc-ee’s stores, I can tell you that they are quite the destination. Buc-ee’s tend to be absolutely massive, with checkout lanes (everything’s bigger in Texas). People even buy T-shirts with Buc-ee’s logos on the front, with various Texan sayings on the back. I personally own three of them. So it’s kind of an understatement to call Buc-ee’s a “convenience store,” by Minnesota standards. And one can hardly complete a description of Buc-ee’s without noting that it is considered to have the “best bathrooms in Texas.”

Credit: Houston Chronicle

Choke Canyon? Yeah, its locations are pretty big too, but the mascot is far less cuddly. Though, it has a nice saying above the exit that probably wouldn’t work at Buc-ee’s: “See ya later, alligator.”

Credit: Yelp

Buc-ee’s sued Choke Canyon for a variety of claims, including: trademark infringement, dilution, unfair competition, and unjust enrichment. We cover these topics frequently on DuetsBlog (check out the topics column).

I must admit that when I first read about the suit, I could hardly believe it. I agree with my colleague that “the best I see from this case is that Choke Canyon may make consumers think of Buc-ee’s stores and beaver, but consumers don’t seem likely to assume that that there is a connection between the two.” And I also think that ” if it weren’t May, I’d assume this was an April Fools Day joke.”

But it’s no joke, and after a four-day jury trial and six hours of deliberation, Buc-ee’s won on all fronts. Specifically, the jury answered six questions (downloadable here):

  1. On Buc-ee’s claims for trademark infringement of its Buc-ee’s Logo, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
    • Interestingly, the jury sent one note to the District Judge during deliberations, asking “Does the logo to be considered by the jury in rendering an infringement judgment include a version without words?” To which the Judge responded, “Yes.”
  2. Do you find that Buc-ee’s Logo was famous throughout Texas before Choke Canyon’s use of the Choke Canyon Logo?
    • Jury answer: Yes
  3. Because the jury answered “yes” to question 2, they skipped question 3 (which pertained to specific geographic areas in Texas).
  4. On Buc-ee’s claim for dilution by blurring of its Buc-ee’s Logo, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
  5. On Buc-ee’s claim for unfair competition, do you find for Buc-ee’s or Choke Canyon?
    • Jury answer: Buc-ee’s
  6. On Buc-ee’s claim for unjust enrichment, do you find for Buc-ee’s or Choke Canyon?
    • Jury Answer: Buc-ee’s

I am surprised by the generality of the questions presented to the jury, and it’s interesting that the jury was not asked about damages–perhaps the issue was bifurcated and will be tried to a different jury.

Question 1, and the jury note, suggests to me that the jury was allowed to focus purely on the similarities between the cartoon animals in the above logos, disregarding Choke Canyon logo’s ribbon stating “Choke Canyon Travel Centers.” But even then, the only obvious similarities are the orientation of the mascots, the yellow background, the wearing of a hat, and their smiles and red tongues. It is hard to believe those basic, nominal characteristics are enough to show consumer confusion and infringement. Maybe Choke Canyon has a good chance on appeal or at judgment notwithstanding the verdict.

And I cannot help but wonder, in view of Question 2, whether the fact that Buc-ee’s mark was famous throughout Texas prior to Choke Canyon’s use of its alligator mark played the most important role in the jury’s verdict. Perhaps the jury felt that Choke Canyon intended to ride on Buc-ee’s mark. Indeed, at closing argument, Buc-ee’s counsel reminded the jurors that a survey showed more than 80% of Texans recognize the Buc-ee’s logo. But I tend to agree with Choke Canyon’s closing argument that the lawsuit seems directed at stifling competition, rather than truly protecting consumers–pointing to Buc-ee’s own prior statement that it only noticed the potential for consumer confusion when Choke Canyon began buying property in towns where Buc-ee’s operates. I find it hard to believe that a reasonable consumer would seriously confuse the two mascots and think they were associated. But apparently two actual-consumer witnesses testified in Buc-ee’s favor on this point. Texas sure is a strange place sometimes.

Yesterday in Seattle — where nearly 11,000, sleepless, brand protection, trademark, and IP professionals from 150 countries have registered and converged for INTA’s 140th Annual Meeting — yours truly had the distinct pleasure of sharing some thoughts on the intersection between federal trademark registration and Free Speech. Here are some before, during and after pics:

Before:

 

During:

 

 

After:

Steve Baird, Amanda Blackhorse, Joel MacMull, Simon Tam
Professor Lisa Ramsey, Steve Baird, and Professor Christine Haight Farley whispering in Steve’s ear

Highlights:

Amanda Blackhorse:

Message to Daniel Snyder: “You cannot force honor on someone.”

Steve Baird:

“Federal trademark registration is a giant exception to Free Speech.”

Other messages drawn from here, here, here, here, and here.

Simon Tam:

Interpreting USPTO: “They said we were too Asian!”

Joel MacMull:

The Tam case never should have been decided on Constitutional grounds!

Great questions from the engaged crowd, wish there had been much more time!

What were your highlights from the panel discussion?

UPDATE: Simon Tam, writing about Paper Justice, here.

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:

 

 

In recent USPTO news, Trader Joe’s, the supermarket chain known for its eclectic and unique foodstuffs, recently filed an opposition to registration of the mark “Trader Schmo,” which is described as designating a wide variety of Kosher foods. Understandably, Trader Joe’s took issue with the mark, and particularly its use in the food category. The company instituted an opposition (which I cannot help but note is #999,999), arguing that “Trader Schmo” will confuse consumers because consumers will naturally switch “Joe’s” with “Schmo,” given the popular phrase “Joe Schmo.”

This is not the first time Trader Joe’s has taken legal action to protect its brand. Notably, just a couple years ago the company sued “Pirate Joe’s,” a counterfeiter with a backstory almost too unbelievable to be true. Pirate Joe’s was a “rebel Canadian grocery operation,” which bought Trader Joe’s products in the United States and “smuggle[d] them across the border to Vancouver” to sell them. Pirate Joe’s eventually ran aground under the immense pressure of its legal fees.

Pirate Joe’s Comes Crashing Down, Credit: Georgia Straight

This new dispute reminds me of the famous “Dumb Starbucks” experiment by comedy TV series Nathan For You. Over one weekend in 2014, the show opened a coffee shop that looked just like a real Starbucks, except that its name and every drink it sold was preceded by the word “dumb.” The comedian behind the prank (or “art“) claimed that “Dumb Starbucks” was permissible fair use because both the use of the Starbucks mark, as well as the store itself, was one big parody. One cannot help but notice some parallels to Trader Schmo; the latter word refers to a hypothetical “dumb” person.

Comedian Nathan Fielder, Credit: New Yorker

Dumb Starbucks and Trader Schmo raise difficult questions about permissible comedic use under trademark law. On the one hand, the marks free ride on the notoriety of other marks, bringing attention. On the other, it seems unlikely the marks would cause actual consumer confusion, making them harmless jokes. Whether Trader Schmo runs afoul of the Lanham Act will likely depend on two major inquiries: (1) whether it constitutes infringement or dilution, and (2) whether statutory fair use defenses apply.

InfringementPreviously on this blog, I explained that infringement usually centers on likelihood of confusion, which is evaluated using a variety of factors:

whether the use is related, the strength of the mark, proximity of the use, similarities of the marks, evidence of actual confusion, marketing channels employed, the degree of care likely to be exercised by consumers, the user’s intent in selecting the mark, and the likelihood of expansion of product/service lines.

The factors could support a finding of infringement here. The uses are related (food). The strength of the Trader Joe’s mark rides the line between arbitrary and fanciful to descriptive; who is Trader Joe in the abstract, and what does he sell? Surely the marks are similar…sounding. But on the other hand, would an average Joe really mistake Trader Schmo for Trader Joe’s? As a counter, though, it seems reasonable to infer that Trader Schmo was selected because it is similar to Trader Joe’s.

Dilution: So there might be infringement. How about dilution? This occurs when the similarity between the accused mark and a famous mark is likely to impair the distinctiveness or reputation of the famous mark. Dilution does not require any actual or likely consumer confusion. Depending on how good Trader Schmo’s Baba Ganoush, Gefilte fish, Matzo ball soup, and Borscht taste, Trader Joe’s could have an argument for dilution–especially if Trader Schmo’s grows large enough to undermine the distinctiveness of Trader Joe’s as a famous brand.

Fair Use: Generally speaking, the fair use provisions for infringement and dilution both require: (1) that the accused mark be used in a descriptive sense and not as a mark, and (2) that use of the accused mark be fair and in good faith. However, fair use does not provide a defense to infringement if there is likelihood of confusion–but we’ll gloss over that for now.

First, Trader Schmo could arguably be descriptive, delineating traded products. And the word ‘schmo’ has Jewish roots, which could describe the Kosher foods the mark designates. On the other hand, Trader Schmo isn’t inherently descriptive in that it actually describes a product or a characteristic or quality (e.g., Vision Center, a store for glasses). And it’s being used as a mark. So fair use might not even apply.

Assuming descriptiveness, the second element (the ‘fair’ aspect of the doctrine of fair use) often implicates the kinds of First Amendment interests that protect parody, satire, and criticism. But there’s no indication that Trader Schmo is intended to comment on Trader Joe’s. Moreover, courts have rejected the idea that a use is “fair” or in good faith if its similarity to a protected mark is deliberately concocted to garner attention. Trader Joe’s could have a good case for that here–just as Starbucks likely had against Dumb Starbucks.

A high-level analysis of the Trader Schmo mark suggests it could constitute infringement or dilution and is not fair use. This conclusion underscores trademark law’s general distaste for humor when it comes to commerce, as opposed to actual social commentary and comparison.

Aren’t digital advertising billboards amazing? My iPhone captured this rolling series of images just yesterday, for a health care organization using the Google trademark in the Minneapolis skyway:

My questions, permission, co-branding, no permission, but classic or nominative fair use?

Is Google flattered? Free advertising? Do they care? Should they care?

Discuss, to quote John Welch, on another subject.