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.

CaptainPhilipRapalaIt took me a little while to find the message and humor in this one. I’m generally not the first to get the joke, probably dead last on this one though, since the fishing opener was last month.

As you know, we have enjoyed commenting on Rapala’s billboard ads each year, but when I first saw this one, I figured it must relate to some inside joke about a certain film I never saw.

How much do you like this Rapala Billboard ad?

I’ll ask a larger question too, how do marketing types go about predicting ad effectiveness when the embedded and intended humor is not immediately accessible to all potential consumers?

Every now and then, I come across branding campaigns which make me ask "What were they thinking?"  Although the question may sound condescending, I often ask it in a literal sense, trying to figure out why advertisers made certain decisions.  

One particular advertising campaign that I can’t figure out is the "Land of Beef."

It appears that the goal of this campaign is to show various "beefscapes" which I suppose are intended to make beef more appealing (see other examples here and here).  However, I don’t get how they could accomplish this goal.   As another blogger has asked:  "How is that appetizing."  Frankly, I want my steak tender; not rock hard like a canyon wall. 

Another advertisement that I can’t quite figure out accosts me on my way to the office every morning.  It’s an advertisement for Manny’s Steakhouse, which arguably serves some of the finest steaks in Minneapolis (and elsewhere).  The advertisement depicts a giant bull in all its anatomically correct glory with the tag line, "Manny’s:  One Helluva Sac Lunch."   (Dan Kelly previously referenced this photo in his "Tasty Humor" post.)  I can see how it might be funny, but again, how is it appetizing.

Now, I’m a big steak fan.  I love red meat.  (Is there any other kind?)  But, these advertisements absolutely do not make me want to eat beef.  In fact, they make me want to steer clear until the image disappears from my mind.  Who wants the last thing going through their mind before taking a bite into a delicious steak to be bull testicles?  Objectively viewing these campaigns, who is the target market and what is the goal?  I can’t come up with a satisfactory answer for either. 

–Dan Kelly, Attorney

My wife and I recently received a gift of chocolate, called the Marital Bliss Bar, from Bloomsberry & Co.  The packaging is quite humorous:

Bloomsberry’s other chocolates are also in generally humorous packages, with some bordering on edgy, even racy — all can be viewed at its website.

Humor in marketing and product packaging carries some risk, because taste in humor is like taste in most everything else — it will vary from person to person.  For instance, this image of a bull does not make me want to dine at the advertised steakhouse, but I could imagine the pictured billboard being an effective ad for some audiences.  (And while I will concede that my criticism may generate more impressions for the ad, isn’t it a bit ironic that high quality beef comes from steers, not bulls?)

This exercise leads me to conclude that I am likely a member of the former company’s target market, but not the latter’s.  Which one are you in?