Jimmy Buffet’s Margaritaville Enterprises LLC recently opposed registration of the mark “Marijuanaville” because the mark was too similar like its “Margaritaville” mark and could cause confusion. The Trademark Trial and Appeal Board upheld the opposition by the owners of Margaritaville to the registration of Marijuanaville.
Donna Tobin, co-chair of the Trademark & Brand Management Group and a member of the Litigation Group, Frankfurt Kurnit Klein & Selz, recently sat down with Inside Counsel to discuss the “state of mind” argument by Margaritaville. Tobin represents established and emerging companies worldwide, counseling them on how best to obtain, protect, and enforce trademarks, copyrights and patents.
“Because the marks are not identical, and the ‘Margarita’ and ‘Marijuana’ portions are different words, Margaritaville had to prove that the marks essentially have the same meaning, confusing the public into thinking goods bearing either mark come from the same place or are somehow associated,” she explained. “They did this by asserting that the suffix ‘ville’ is a slang term used to refer to a state of being and that both Margarita and Marijuana are substances which alter a user’s state of mind.”
Margaritaville argued that the public would understand that goods branded regarding a chemically induced paradise would come from Jimmy Buffet. So, Margaritaville can leverage fame and name recognition, rather than leaning on their existing trademarks/copyrights, to protect their brand.
“One thing Margaritaville did well is to build up brand recognition in the Margaritaville trademarks, to the point that they now have a finding in the Trademark Office that the Margaritaville marks can be considered famous enough that it is a factor to be considered about others trying to register similar marks,” said Tobin.
Fame and false association arguments can actually help even where an entity does not own a trademark. A trademark infringement analysis involves analyzing whether the marks look and sound the same and have the same meaning. According to Tobin, there can be marks which do not look or sound like any marks Margaritaville owns, but still could be associated with Margaritaville and Mr. Buffet.
“This false association argument does not require trademark rights, but does require proof that the proposed mark misappropriated the unique public persona of the plaintiff,” she explained. “Just like a likelihood of confusion argument, this argument can be made both in the context of stopping another from registering a trademark or from using it through an infringement action in federal court. In the context of preventing use it is a type of unfair competition argument.”
Where a famous entity does not own a registration for a mark like the one it wants to prevent from use it can assert that because of fame and public recognition the public would associate the mark in question with the famous entity. For example, Nike tried to stop registration of a graphic image of a person doing a one-handed handstand – arguing that it would be associated with Michael Jordan because when it was turned upside down it looked like Michael Jordan dunking a basketball, but that argument failed.
Tobin explained, “Turning to use of a mark which includes the name or persona of a famous person, the unfair competition law of the U.S. prohibits use of a mark on or about goods or services which deceives or misleads the public into thinking there is an association or connection between those goods and services and another person or entity.”