|
We hope you’re looking forward to more news about trademarks, franchises, and other legal stuff.
In this edition:
- What should we call the band?
- Did Buc-ee’s mess with the wrong cartoon moose?
- Why register a trademark?
If you would like to see a video recap of our previous newsletter, check it out here.
If some nice person forwarded this to you and you’d like to be on our list, you can sign up here.
The newsletter may be on a little tea break as your author attends the upcoming Annual Meeting of the International Trademark Association in London. If you’re going, let us know!
What should we call the band?
We are excited about the upcoming International Trademark Association Annual Meeting in London, but we may be more excited about the pre-game show by The OppositionTM - a loose confederation of musicians who like to play covers before the meetings. If you’re going to the meetings, come on over to the Troxy on Saturday night, 2nd May (as they might say over there) for an all-British line up of music.
Looking at the set list got us thinking about band names, which can be trademarks, and often very valuable ones with interesting histories.
Consider Led Zeppelin. The band traces its origins to a prior group named “The Yardbirds” and its next iteration, “The New Yardbirds.” A departing member reportedly sent a cease and desist letter over the band continuing to use that name, so the remaining members had to come up with something else.
The story is that the band had also been considering forming a “supergroup” with some members of The Who (also on the setlist), which someone jokingly said would be about as successful as a “lead balloon.” The supergroup never formed, but the comment (allegedly from The Who’s Keith Moon) got the existing band thinking of a new name. They replaced “balloon” with zeppelin and changed the spelling to “led,” supposedly so people would not mispronounce “lead” as “leed.” The rest is history. Just remember, Wayne, no Stairway.
The band name is still a registered trademark for a wide variety of products, including sound recordings, books, and various clothing (but no longer “underwear,” which was deleted somewhere along the way - that may be its own story).
The band name also illustrates a good concept in trademark law - that “distinctive” terms are more likely to be protectable. Arbitrary words and “incongruous” word combinations are often considered more distinctive and easier to protect. So here you have “led” - a misspelling of “lead” - and “zeppelin,” which are arbitrary words for music and also do not necessarily go together. The result is a term distinctive and unique enough to identify a single group, which is what trademarks are all about.
Other band names that are still active trademarks (and also on the set list) include Deep Purple, Spice Girls, and Rolling Stones.
Another important trademark issue for band names is their ownership and control. After all, many bands are loosely formed, with legal details not always the primary focus. This can lead to disputes when band members leave but want to continue using the name. Al Jardine, one of the original “Beach Boys,” found himself in a long-running series of court cases over whether he could perform under band names like “Beach Boys Family & Friends,” “Al Jardine, Beach Boy,” and “Al Jardine of the Beach Boys,” despite not having a license from the owner of the “Beach Boys” trademark.
Similarly, tribute bands sometimes piggyback on the band names they honor, which can lead to disputes, such as when ABBA sued the tribute band “ABBA Mania” to prevent alleged confusion over the name, as reported by The Guardian. There have even been legal fights between tribute bands, including one between two Eagles cover bands, “Hotel California ‘A Salute to the Eagles’” and “7 Bridges.”
Maybe, like the Doobie Brothers said, we should just “listen to the music,” but the band names and their trademarks are still interesting.
Did Buc-ee’s Pick a Fight with the Wrong Cartoon Moose?
To paraphrase John Candy’s line to Chevy Chase in the original Vacation movie, “the moose out front should have told you” not to pick a fight over cartoon animals at gas stations. At least that may be what the Mickey Mart chain of convenience stores is saying to Buc-ee’s in its recent counterclaim.
As loyal readers will recall, the Buc-ee’s brand of super gas stations symbolized by a giant beaver has been actively policing what it believes are confusingly similar cartoon animal mascots used by competitors. The latest episode involves a lawsuit against Mickey Mart in Ohio, which uses a moose.
Mickey Mart filed a counterclaim this week that sums up its position in six words: “A moose is not a beaver.” Indeed. But does this argument “cut legal ice,” as one of our mentors used to say?
Mickey Mart disputes Buc-ee’s trademark claims, providing a visual tour explaining that the use of “cartoon animals by convenience stores in trademarks is as old and common as convenience stores themselves.” It cites the Sinclair Oil dinosaur, a skunk used by Stinker Stores, Exxon’s tiger, and Wally the Goose from the Wawa, as well as other brands using owls and coyotes. You can see the counterclaim here.
Mickey Mart alleges that Buc-ee’s has engaged in “unfair competition based on malicious litigation,” arguing that the trademark claims are “objectively baseless” because Mickey Mart has used its own trademarks for decades, the companies operate in different channels, and “their respective marks are so dissimilar that no likelihood of confusion is objectively possible.” Mickey Mart claims Buc-ee’s is a “trademark bully,” citing a “history of suing smaller companies that are using marks with cartoon animals in the states in which Buc-ee’s has expanded or is soon to expand, frequently forcing those smaller companies to settle out of court.”
Trademark infringement is a form of unfair competition. So Mickey Mart is essentially saying that Buc-ee’s, by filing lawsuits for unfair competition, has engaged in unfair competition itself. This will be one to watch, regardless of what the moose out front should have told you.
| 
