Likelihood of confusion? Likelihood of dilution? Blurring? Tarnishment? All to the left?

 

To closely examine Sears’ most recent trademark infringement and dilution law suit and complaint concerning the DIEHARD brand against the maker of DieHard Spray ("a numbing agent for male genitalia"), check out Sears, Roebuck & Co. v. Rockhard Laboratories, Inc., venued in the

Losing a trademark challenge is bad news, right? It’s costly, it’s embarrassing, and it can damage a brand’s reputation.

And yet in one well-known instance, losing a trademark challenge didn’t hurt a brand at all. In fact, it ensured the brand’s immortality.

The product name I’m thinking of existed for just three years in the 1990s before the death-dealing trademark challenge. The company name survived in slightly altered form; the product name was replaced by a series of successor names.

Now, more than eleven years after that legal defeat, the original product name is still used, erroneously but ubiquitously, to describe an entire class of products—products that themselves exist mostly as fading memories.

What’s the product name?

I’ll give you one more hint: it’s a technology brand.

Answer after the jump.


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The Minneapolis Star Tribune finally reported on the Who’s Your Patty? trademark infringement lawsuit filed in August by self-proclaimed "David" (Lion’s Tap) against "Goliath" (McDonald’s), here. Our previous coverage is here, here, and here.

The Star Tribune reports that McDonald’s has not yet answered the complaint filed by Lion’s Tap. That’s true, but all that means is that Lion’s Tap filed, but has not yet formally served the complaint on McDonald’s. Had the complaint been formally served on McDonald’s, as the rules require before an obligation to answer arises, then McDonald’s would have twenty days in which to respond. So, the parties continue to negotiate for an amicable settlement. 

No doubt, "David" would prefer not to have to formally serve the complaint because that is when the federal court’s machinery starts to turn and more significant money begins to be spent in pursuing the case. Of course, Lion’s Tap will need to formally serve the complaint on McDonald’s within 120 days of filing the complaint or risk the suit being dismissed, so, just before year end. We previously have discussed the strategy of filing, but not immediately serving federal court complaints, here.

The Star Tribune story also reports: "The Lion’s Tap says it has been using the phrase for at least four years and has had it trademarked in Minnesota. It also has a federal trademark application submitted." The use of past tense "had" appears to repeat the same incorrect fact that most of the media ran with when the story originally broke, namely, that Lion’s Tap had registered Who’s Your Patty? as a trademark slogan before McDonald’s began use of the same slogan, implying McDonald’s knowingly "stole" something of Lion’s Tap.

As you may recall, we already pointed out how nearly all the media outlets got this critical fact wrong, as Lion’s Tap did not register until ten days before it filed suit against McDonald’s, and well after McDonald’s posted billboards bearing the slogan. All the Hamburglar references don’t stick to McDonald’s if it knew nothing about Lion’s Tap’s discrete prior use of the Who’s Your Patty? slogan, an entirely plausible scenario, as we have already discussed, here.

Most interesting, at least to me, are the scores of reader comments to the Star Tribune story, here.

For the time being, they reveal that, for just about every enthusiastic Lion’s Tap fan who loves to support the small fry and is cheering on "David" there is a pretty harsh critic of Lion’s Tap, some even taking pot shots at the quality of its food. Indeed, it appears a substantial number would endorse Jason Voiovich’s caution: "Here’s the problem, instead of coming off as the victim (which you could argue Lion’s Tap is), they come off as another coffee-in-the-crotch, show-me-the-money, lawsuit-happy opportunist." So, you might say that PR can cut both ways.

The comments also understandably reveal more confusion between Lion’s Tap and Lyon’s Pub than between David’s and Goliath’s respective uses of Who’s Your Patty?

Also, I learned from the comments about another reportedly great burger joint that appears to be worth the extra drive: Hopper’s Bar in Waconia. I’ll make sure to let you know how that goes. So, beware, PR efforts can unintentionally inform even loyal patrons of competitive alternatives too!

More on the legal claims, after the jump, in case you’re interested.


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