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.

Tis’ the season for football, not just on the gridiron, but also at the U.S. Patent and Trademark Office. Shortly after the “Minneapolis Miracle,” as we reported this week, the Minnesota Vikings applied for registered marks on the phrase. And with the “big game” approaching, teams have titles on the mind–even those that aren’t in contention (ahem, Green Bay Packers).

Just one week ago, the Green Bay Packers initiated an opposition proceeding with the Trademark Trial and Appeal Board (the “TTAB”) against McClatchy U.S.A., a publishing company associated with the Fort Worth Star-Telegram. The dispute stems from the Star-Telegram‘s use of “Titletown, TX” as the title of a 20-short-video documentary series chronicling “the story of the 2016 Aledo [TX high school] Bearcats and their quest for a sixth state [football] title in eight years.”

Courtesy: PBS

The Packers have owned registered competing marks, such as “Titletown U.S.A.,” “Titletown,” and “Titletown Towel” since as early as 1993 (though, the Packers assert they have “made widespread and continuous use” of the marks since the 1960s). The Packers appear to have only begun policing the Titletown name at the TTAB since the start of this decade, however, filing five oppositions against related marks, such as “Title Town Talk Show” and “Titletown Brewing Co.”

The Titletown mark has acquired additional meaning and value to the Packers since the organization opened a development district by the same name outside Lambeau Field last year. The Packers invested almost $65M to complete the first phase of the district by this fall. The Titletown District includes a hotel, sports medicine clinic, ice skating rink, restaurant, and artificial tubing hill. And this summer, it got its own logo:

Courtesy: Twitter

The Packers allege that the “Titletown, TX” mark and use in the Texas video documentary series creates a likelihood of confusion and dilutes the “Titletown” and related marks. Why? Because the Star-Telegram uses the mark in connection with football. And that conflicts with the general public’s wide recognition of the mark “as being associated with a single source, and further recognizing the single source as [the Packers].” And the Packers allege that the Titletown name is distinctive with regard to entertainment, video, news, and commentary related to football such that it has acquired secondary meaning. Not only that, but the Packers consider the mark “famous and exclusively associated with [the Packers] in the mind of the consuming public.”

Setting aside the high likelihood that several fanbases and regions across the United States would likely dispute the Packers’ allegations as to fame and widespread recognition and acceptance, the primary questions before the TTAB are whether the use of the “Titletown, TX” mark in the short-video series is likely to cause confusion, mistake, and/or deception as to the source or origin of goods and services. And, further, whether use of the mark is likely to dilute the distinct quality of the Packers’ marks.

Generally, the strength of a mark depends on whether it is arbitrary or fanciful, suggestive, or descriptive. Because the Packers argue distinctiveness and secondary meaning, the organization appears to contend that the mark is descriptive (the lowest strength outside of generic), implying that the Packers are title winners. And historically, this is true; the Packers have been league champions a record 13 times (9 more than the nearest rival team, the Chicago Bears). And the Packers have won three consecutive NFL titles twice. Interestingly, though, the Aledo Bearcats have also won three consecutive state titles twice. This could set up a descriptive fair use defense for Star-Telegram.

When it comes to likelihood of confusion, the primary factors include: 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 Packers might have a case, but not a very strong one. Star-Telegram‘s use may be related to how the Packers use the Titletown mark in some contexts. But the Packers use the Titletown mark in multiple ways, only one of which relates to reporting about football. Indeed, the Packers are beginning to use the mark more in connection with the new Titletown District. Star-Telegram‘s use is in a very different market: Texas vs. primarily Wisconsin. The use relates to different football leagues: high school vs. the NFL. And the marketing channels are different: online newspaper vs. broadcasts. Ultimately, it seems unlikely that a typical consumer would confuse the two uses: think cheeseheads vs. longhorns.

When it comes to dilution, the primary inquiry is whether the use of a mark is likely to impair the mark’s distinctiveness or harm the reputation of the famous mark. The Packers allege that “[a] recent survey concluded the term TITLETOWN is known to virtually the entire population of consumers surveyed and a substantial majority of those who are aware of the term TITLETOWN, associate it specifically with the Green Bay Packers.” This may demonstrate distinctiveness. On the other hand, it is difficult to see how a short-video series on successful high school football teams in Texas would harm the Titletown mark’s distinctiveness as to the Packers and professional football or harm the reputation of the mark.

McClatchy has until February 26, 2017 to answer the Packers’s opposition. By then, there will be a new reigning NFL titleholder, much to the envy of the allegedly-undisputed Titletown team. But even more to the Packers’s envy, the new titletown (or place of the title game) will technically be Minneapolis.

With hard pressed economic times, state and local governments have turned to new sources of revenue: intellectual property licensing. The City of New York has been in the game for decades, licensing use of its the I ♥ NY symbol. San Francisco enforces its rights in the image of its BART transit pass. And Portland is the proud owner of an old sign with a reindeer.

Nobody likes being left out, especially Texas. So it shouldn’t have surprised anyone when the Texas General Land Office (“GLO”) asserted a claim of trademark infringement against the Alamo Brewing Brewing Co. and the Texian Brewing Co. (logos shown below).

Alamo Beer Co Logo

Texian Brewing Logo

The GLO claims that the the outline of the facade of the building is a “treasured symbol of Texas liberty” and its use, along with the word ALAMO, suggests an affiliation with the State and the historic Alamo location. In filings with the court, the GLO claims that the roof outline is famous and that “consumers anticipate that products bearing [these marks] are used by or with permission of the state.”

The GLO also owns a number of U.S. registrations for the marks THE ALAMO and THE ALAMO and Design, shown below:

Alamo Design mark

What do you think? Famous? Distinctive? Or common Spanish colonial roof that reminds you more of Taco Bell than the State of Texas?

On a brief review, it is difficult for me to find the fame of the Alamo roofline mark. Maybe it is in the basement.

The GLO and the brewery reached a settlement recently, in which the parties agreed to  a Consent Order and Final Judgment for the legal proceeding. This judgment and order issued yesterday, but the actual terms of the Settlement Agreement are confidential.

The GLO’s Commissioner has reportedly stated that companies are free to use the wording ALAMO, but cannot use the images or insignia of the Alamo, such as the roofline (good news for Alamo Rent a Car). In respect of the confidentiality terms, the Alamo Beer Company’s CEO Eugine Simor was quoted as stating that the “Alamo Beer Company is allowed to use the shape of The Alamo. I really can not say much more.”

In an apparent effort to convince other business to remove lines which look like roofs from their logos, the Press Secretary for the GLO released the following statement:

Alamo Brewing Company is the first commercial recipient of an official license to use the Alamo mark, for which they paid a substantial licensing fee. Any and all fees collected for use of the mark will be put in a dedicated fund for the Alamo. This matter was resolved amicably and the GLO is pleased to have come to mutually acceptable terms of agreement in this matter. (emphasis added)

It is interesting that after so many years, Alamo Brewing is the first commercial recipient of a license. While they may be the first to receive a license, it seems unlikely they were the only party to use the ALAMO mark or an image of the roofline. It’s possible that there may be enough third-party uses to show that the GLO’s marks are weak or entitled to narrow protection. But, then again, I have always heard that everything is bigger in Texas. Apparently that applies to the scope of protection for trademark rights, too.

 

Laurel Sutton, Senior Strategist at Catchword Brand Name Development

Of all the marketing people in the biz, you’d think a PR firm would have the best instincts for names that appeal, rather than repel, the public at large. A firm in Austin, Texas that specializes in food and drink recently chose the name Perennial PR, which is pretty good, by naming standards: it’s alliterative, has nice associations with longevity and beautiful flowers, and would likely offend no one. It’s a safe choice, in contrast with the firms previous name: Strange Fruit PR.

Does that name make you stop reread the sentence? Or does it just seem like a fun way to reference their unique take on hospitality and food & drink?

Perhaps it’s a generational thing. The song “Strange Fruit”, recorded by Billie Holiday in 1939, was explicitly about the lynchings of young black men in the American South. It was named the song of the century by TIME magazine in 1999 and added to the National Recording Registry by the Library of Congress in 2002. It continues to be covered by various artists and has inspired other creative works. It’s a song and a metaphor that has never really departed from society’s stage.

But it would be a mistake to assume that everyone in the U.S. shares that knowledge – especially those under the age of 40. Perennial’s co-founder, Mary Mickel, explained in a statement to the American Statesman, “We of course Googled to ensure that it was not taken elsewhere and found the Billie Holiday song online. Thinking it would have nothing to do with our firm, and since it was written in 1939 it wouldn’t be top of mind in the public consciousness. We now know we were naïve to think that, and should have known better.”

It’s a good apology; too bad it had to come after they were called out on Twitter by writers like Audra Williams and Mikki Kendall. It’s interesting that they started using the name Strange Fruit PR back in 2012, but got real heat for it only in the righteously angry days of late 2014. Up until the change, they’d even defended the name as encompassing “the uniqueness and creative individuality that our clients reflect”. (That’s some good PR-speak!)

Lesson #1? Google can only provide you with data; it can’t tell you which decision is correct. Evaluating Google results when researching, say, your new company name, is a skill in and of itself; as we in the naming business like to say, “Don’t believe everything you read on Urban Dictionary.”

And Lesson #2: When people tell you that your brand name is problematic, you should listen to them. If you’re privileged, you may have lived a life in which a song like “Strange Fruit” isn’t relevant; but you must acknowledge that, for a significant percentage of your audience, the sentiments of the song are all too real.

About the generational thing: I have noticed that many of my naming clients, especially the younger ones, are not very sensitive to (what seem to me) overtly negative WWII references. “You might not want to use Axis as a name, or SS as a product model prefix,” I will point out gently. Blank stares.

Also noted: there’s a performing arts company in Melbourne, Australia called Strange Fruit, but one suspects the phrase doesn’t have the resonance there as it does here. This is not to deny the long history of racism against Australian Aboriginal people; but Australia does not have the experience with slavery and its horrific aftereffects as does the U.S. I wonder if they have ever gotten complaints about their name.

Debbie Laskey, MBA

When we think about the qualities that characterize a leader, we often create a list that includes charisma, vision, and strength. But it’s also important to consider the qualities that a leader instills in his or her followers, such as, loyalty, motivation, and dedication.

For an individual to be an effective leader, he or she must be extraordinary at the core of his or her spirit – capable of overcoming extreme odds, capable of seeing much more than a quick fix to a fleeting crisis and, above all else, capable of inspiring followers to join together to achieve a common goal or aspire to become better individuals. Sandra Day O’Connor, the first female member of the US Supreme Court, represents the epitome of this most extraordinary type of leader.

Sandra Day O’Connor was born in 1930 in El Paso, Texas. She attended Stanford University, where she earned a BA Degree in economics followed by a law degree. She also served on the Stanford Law Review. In December 1952, she married John Jay O’Connor, and they had three sons. She was married for 55 years until John’s death in 2009.

In spite of Sandra Day O’Connor’s accomplishments during law school, no law firm in California would hire her due to her gender. One law firm offered her a job as a legal secretary – which she refused. Instead, she dedicated herself to public service and accepted a position as Deputy County Attorney of San Mateo County in California. She also worked in Germany as a civilian attorney and practiced law in Arizona. In 1969, she was appointed to the Arizona State Senate and re-elected twice. In 1975, she was elected judge of the Maricopa County Superior Court in Arizona until 1979, when she was appointed to the Arizona Court of Appeals by Governor Bruce Babbitt. During her time in the Arizona state government, she served in all three of its branches.

Ronald Reagan made a pledge during his 1980 presidential campaign that, if elected, he would appoint the first woman to the Supreme Court, and on July 7, 1981, he nominated Sandra Day O’Connor as an Associate Justice. Pro-life and religious groups opposed the nomination because they feared she was pro-abortion, but on September 21, 1981, Sandra Day O’Connor was confirmed by the US Senate with a vote of 99-0.

During her tenure as a Justice, O’Connor was known to review cases on an individual basis, which placed her in the center of the court and drew both criticism and praise. She retired from the court in January 2006, and in August 2009, was awarded the Presidential Medal of Freedom, the highest civilian honor of the United States, by President Barack Obama.

What makes Sandra Day O’Connor a great leader? While she was not a CEO or president of a Fortune 500 company, she demonstrated leadership traits on a daily basis. She set goals and accomplished them. She taught, and she learned. She created a team and led. She accepted public criticism and gave credit. She listened and spoke. She inspired and was inspiring. The truth is, there are not many of us who would hold our heads high if we had been in O’Connor’s shoes when she could not find a job as a lawyer. Instead of shouting about the unfairness of the situation, she looked for another option, an option that would yield great results once she proved herself in public service.

So, the question should not be, what makes Sandra Day O’Connor a great leader. Instead, we should ask ourselves, how can we apply her leadership qualities and successes to our businesses and everyday lives?

While this post was originally written a couple of years ago, I have reprised it as a result of an exciting experience. On March 4, 2014, I was thrilled to attend a luncheon featuring the Honorable Sandra Day O’Connor. She spoke in an endearing manner and regaled the audience with humorous anecdotes from her days on the Supreme Court as well as commentary about her latest project as the creator of iCivics, an online game that provides students with tools for active participation in the democratic process so that they become engaged citizens. Despite being 84, Sandra Day O’Connor continues to lead and inspire.