Brand BattlesSM
Trademark Disputes of Interest
By: DEAN R. KARAU
February 2008
Trademark disputes pit brand against brand, and can be some of the most contentious litigation.
A Cheesecake Dispute
Cheesecake Factory, Inc. filed a lawsuit against The Cheesecake Factory, Incorporated in February 2008.
The plaintiff owns and operates a wholesale bakery and restaurant/retail bakery using the name and mark DEE’s CHEESECAKE FACTORY since 1973. It is now one of the largest producers of cheesecakes in the U.S., and it distributes its cheesecakes worldwide.
The defendant owns the restaurant chain “The Cheesecake Factory,” which started its first restaurant in 1978 in California, but had been operating a wholesale bakery with a small retail operation in 1972.
This lawsuit has its genesis in a 1997 suit that settled after a court found that the plaintiff held prior user rights to the CHEESECAKE FACTORY name in certain parts of the U.S. and that the marks DEE’S CHEESECAKE FACTORY and THE CHEESECAKE FACTORY were confusingly similar.
In the current suit, the plaintiff claims that the defendant, when filing new applications for its marks, never disclosed to the U.S.P.T.O the settlement agreement which limited its rights geographically, and falsely claimed that it had the rights to use its marks throughout the U.S. without restriction. The plaintiff also alleges breach of the parties’ settlement agreement and unfair competition under state law.
Stay tuned to see which party will have its cheesecake and eat it, too.
Cheesecake Factory, Inc. v. The Cheesecake Factory, Incorporated, Case No. 08-CV-00167, (D. N.M., filed February 13, 2008)
Naked Cowboy Sues An M&M Made Up To Look Like, Um, A Naked Cowboy
You really can’t make up this kind of story.
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Robert Burck bills himself as the “Naked Cowboy,” and claims to be a top New York Times Square tourist attraction. According to Burke, “it took years for people not to say that’s a stupid idea.” To protect the “intellectual” property in his “not a stupid idea,” Burck obtained a U.S. trademark registration for the NAKED COWBOY word mark for various entertainment services, and a second registration for a design mark resembling The Naked Cowboy’s likeness (right) for various clothing items including underwear.
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Burck, who does not in fact appear naked but with a guitar strategically covering his white undies, did not take kindly to a blue M&M adopting his persona.
Burck has now sued Mars, Incorporated and the creator of the advertising campaign.
Hard to say that I care for either one, but you can imagine that Burck will be able to afford more clothes once the dispute is resolved.
Burck v. Mars, Incorporated et al, Case No. 08 Civ. 01330 (S.D.N.Y., Filed February 11, 2008).
A Foote And Wine Experience
Earlier this month, the owners of E. B. Foote Winery sued the owners of southern California’s Foote Print Winery.
E.B. Foote Winery was founded by Eugene Foote, and it is one of the oldest wineries in Washington State. In 1991 Rich Higginbotham and Sherrill Miller bought the winery.
The surname of the owners of Foote Print Winery is Foote.
As discussed in the October 2007 Trademark Topics™ article, Can You Use Your Own Name in Branding? Not Always, while you may have an absolute right to use your name in many contexts, you may not have an absolute right to use it as a trademark, if your name could confuse the public into believing you are associated with another who began using the name first.
Miller v. Foote, No. 08-00215 (W.D. Wash., filed February 8, 2008).
Pod’s Use Of Dots Puts It On The Spot In Spat
Charles and Ray Eames were among the most important American designers of the Twentieth century, according to the Eames Office, which licenses the work of the Eames. “They are best known for their groundbreaking contributions to architecture, furniture design (e.g., the Eames Chair), industrial design and manufacturing, and the photographic arts.”
The Eames created their “Dot Pattern” (left) in 1949. Eames Office published the Dot Pattern as a fabric in 1999.
The Pod Hotel, located in New York City’s Midtown East neighborhood, touts itself as a place where high style and high tech converge, offering hip, convenient accommodations for the stylish and spendthrifty traveler.
The Pod Hotel obtained a swatch of the actual Dot Pattern fabric, but then allegedly purchased a “knock off” for actual use in its rooms.
Late last month, Eames Office sued the Pod Hotel for copyright and trademark infringement.
As noted in the January 2008 Trademark Topics™ article, Ruby Tuesday’s Makeover Found Shady – Fabric Studio Sues Over Lampshade Design, furnishings, fabric, and other types of décor can be protected by copyright or trademark law. Before embarking on a major interior design renovation project for your business, think twice before copying someone else’s designs. If you leave selection decisions to a vendor, be sure that your contract with the vendor protects you against allegations of infringement.
Eames Office, LLC and Mahram Fabric Corp. v. BD Hotels LLC, Swavelle/Mill Creek Fabrics, Inc. and Vanessa Guilford, 1:2008cv00988 (SDNY January 30, 2008).
Take Me Out To The Ballgame, Er, Federal District Court
Remember the innocence found in the old images of a kid looking through a knothole in a baseball field’s outfield fence, maybe with a police officer approaching with his billy club? I sure do.
Alas, life has changed. It’s no longer a knothole, but a rooftop filled with stadium seating across the street from the ball park. And it’s not a local constable but the venerable Chicago Cubs.
Cozy Wrigley Field is surrounded by small apartment buildings whose owners in recent years have turned their rooftops into gold mines. Overlooking Wrigley field, those rooftops now house stadium seating and the owners provide ballpark food and beverage to baseball fans – for a price, of course.
The Cubbies want it stopped. If you can’t win on the field, at least you can try to win in the courts.
The Chicago National League Ball Club LLC has filed suit this month, claiming that the rooftop entrepreneurs are wrongfully using the Cubs trademarks and creating a false association with the Cubs under U.S. trademark law. The ball club claims that, based on advertising run by the owners, they stand to make a cool $6.7 million in 2008 alone.
Greed has always been rampant in sports in general, and baseball has been no exception. Those of us who love the game are willing to overlook what happens outside of the white lines because of the purity of the game within those lines. Examples such as this try our patience. But in the end, the fans will prevail, regardless of who prevails in court.
Chicago National League Ball Club. LLC v. Wrigley Rooftops II, LLC, et. al., 08 c 968 (N.D. Ill., Feb 15 2008).