We hope you are enjoying the start of August and are still looking forward to more news about trademarks, franchises, and other legal stuff.

In this edition:

• Ricky Bobby Knows Trademark Law
• Buc-ee’s Meets Mr. Nutterbutter
• An Update on the Bad Spaniels Dog Toy Case
• Does Forming an LLC Create Rights to the Name?
• Plus trivia!

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Ricky Bobby Knows Trademark Law

Will Ferrell’s new series on Netflix, The Hawk, may be worth checking out, but just remember that this week we celebrated the 20th anniversary of his titular role in Talladega Nights: The Ballad of Ricky Bobby. 

Among the wisdom imparted by Ricky Bobby was this important tenant of both racing and trademark law:

In the United States, the first to adopt and use a trademark is generally the “senior user” with priority over other “junior users.” The first or senior user is also typically the party with a right to file an application to register the mark with the USPTO.

Junior users aren’t completely out of luck, however. A junior user might be able to use the same trademark in a different part of the country as long as the parties aren’t bumping into each other and as long as the junior user adopted the trademark in “good faith” (whatever that may mean). 

This may be harder to do if the senior user had already registered the trademark with the USPTO, which is (another) reason it’s a good idea for trademark owners to register. But if the senior user has not registered, the junior user may have some options, including seeking a “concurrent use” registration that splits up the trademark rights across the country. And sometimes, especially if the senior user isn’t really developing or growing its brand, the junior user may be able to get greater rights.

All that said, Ricky Bobby’s guidance is still worth remembering, even if he claimed to have protected that guidance as his own trademark.

Buc-ee’s Meets Mr. Nutterbutter

Loyal readers will recall our continuing coverage of the trademark exploits of your favorite mega-gas station and its rodent mascot, Buc-ee’s, as they bring lawsuits around the country to tamp down what they consider infringement of their brand by other companies and their respective animal representatives (which have included a gator, a duck, a moose, and a dog).

As you may have seen, some are pushing back. Just recently, Ohio Governor Mike DeWine questioned the brand’s recent suit against Beaver’s Mini-Mart in Beavercreek, Ohio, as reported by The Columbus Dispatch.  

A more colorful critique came from the comedian John Oliver on his show, Last Week Tonight. The show apparently already had a rodent mascot of its own, Mr. Nutterbutter, “everyone's favorite cartoon animal who doesn't sue small businesses!”

The show is now selling merchandise online with a “Buc-Off” logo, apparently a tribute to (or parody of?) the gas station giant, with proceeds going to Hunger Free America.

So is this an infringement? Or “tarnishment”? Or is it a free speech parody? For more on that issue, check out our next story….

The Bad Spaniels Dog Toy Saga Continues

You may remember the trademark dispute involving Jack Daniel’s and the dog toy called “Bad Spaniels.” If you need a visual, here’s the toy, as demonstrated by our law clerk:

This week, an appeals court ruled in favor of the dog toy maker in the latest decision from a case that has worked its way through every level of the federal courts for over 10 years.  

Jack Daniel’s didn’t care for the toy and what it viewed as an association with dog poop, including the toy’s references to “Old No. 2 On Your Tennessee Carpet” (instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey”), “43% POO BY VOL.,” and “100% SMELLY.” 

The case has had many twists and turns. The trial court first ruled against the toy, finding it infringed and “tarnished” the Jack Daniel’s brand. The court of appeals disagreed for various reasons, including how the trial court evaluated the issues. Following the court of appeals’ instructions, the trial court then ruled in favor of the dog toy. More appeals ensued, and the Supreme Court sent it back for a re-do, saying the court of appeals actually used the wrong approach. Keeping up so far?

The trial court then ruled that the dog toy did not infringe Jack Daniel’s trademarks, but it did “tarnish” them, and it entered an order that the dog toy could no longer be sold.

That just led to another appeal, the one decided this week, where the court of appeals found there was no “tarnishment” and that the trial court’s order prohibiting sales of the dog toy should not have been entered.

There is a lot to unpack here, but the main takeaway for us is that making a parody or a joke out of a famous trademark, even if not always an absolute and unconditional defense in every case, may still be a pretty good defense. “Bad Spaniels is an obvious parody,” and even where parody is “not automatically a complete defense,” the law does not require a court to ignore the fact that it is a joke that should not lead to liability.

What we really wondered about were the judicial law clerks who helped write the opinion and how often they consulted a thesaurus. The opinion mentions “defecation” and “feces,” as well as “poop-themed,” “scatological,” and “lavatorial” references. You can read it here.

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