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.

–Sharon Armstrong, Attorney

California media outlets reported yesterday that Oakland recently joined a boycott against Arizona due to the latter state’s passage of a new immigration bill, which requires police to question people about their immigration status if there’s reason to suspect they’re in the country illegally.  Other cities considering boycotts include Seattle, Los Angeles, and San Francisco.  The boycotts include calls to stop purchasing goods and services from companies located or based in Arizona.  A recent article in Gawker listed some enterprises that might be affected by individuals who choose to boycott, including P.F. Changs restaurants, the GoDaddy domain name registrar, and the Alcor Life Extension Foundation, among others.

 

The aforementioned businesses are located in Arizona and therefore, whether one believes such a boycott is a bold reaction to the law or is just plain wrong, they are correctly included in boycott lists.  Some products and businesses, however, may feel an economic pinch that they don’t deserve – particularly businesses that seem to be based in Arizona but actually have no connection to the state whatsoever.

The most-discussed example thus far is the Arizona Iced Tea, the makers of which own four trademark registrations for or incorporating ARIZONA for use in connection with iced tea beverages.  Arizona Iced Tea is made in New York.

The Trademark Manual of Examining Procedure provides that a mark should be refused registration if it consists of matter that is primarily geographically descriptive of the goods and services offered under the mark (e.g., CALIFORNIA CLOTHIERS for tailoring services based in California) or is primarily geographically deceptively misdescriptive of them (e.g. KETCHIKAN SALMON SURPRISE for frozen salmon entrees originating from the Atlantic ocean and not from Ketchikan, Alaska).  In determining whether a mark is primarily geographically deceptively misdescriptive, the Trademark Office looks to whether  (1) the primary significance of the mark is a generally known geographic location, (2) the goods or services do not originate in the place identified in the mark, (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark, and (4) the misrepresentation is a material factor in a significant portion of the relevant consumer’s decision to buy the goods or use the services.

Here, the Trademark Office registered the ARIZONA trademarks on the Principal Register, thereby indicating that it did not find the ARIZONA trademarks to be either primarily geographically descriptive or primarily geographically deceptively misdescriptive of iced tea goods.  This would seem to be cold comfort, however, if consumers ultimately boycott this non-Arizona product.