Trademark Infringement Headlines Offer Franchisors Important Lessons
This past week has seen several headlines about significant trademark infringement lawsuits. Many franchisors live and die by their trademarks, and their executives need to understand the value of strategic trademark protection and the importance of swift trademark enforcement.
This article takes a look at what franchisors need to be taking away from two recent (mostly) successful trademark infringement lawsuits.
"Griller" Fast Food Chain Defeats "The Original Griller," But Loses to Others
The owner of the Griller fast food franchise chain sued three different restaurant operators operating under the trademarks The Original Griller, Griller King and The Griller Hut, respectively. The Griller franchise owned two registered trademarks covering, among other things, food and restaurant services.
The Griller franchise prevailed in its trademark infringement suit against The Original Griller. This was due, in part, to the fact that The Original Griller’s logo featured the word “Griller” more prominently than the other included words.
However, Griller lost on its trademark infringement claims against the other operators. This was due to the fact that the court considered “Griller” to be largely “descriptive” of the service and products that Griller restaurants sell—preparing and selling grilled chicken.
The Lesson: Context is important when choosing a trademark. First, the strength of a trademark must be determined in the context of the products and services for which it is used. Descriptive trademarks (even registered ones) are generally going to have a much narrower scope of protection, whereas suggestive, arbitrary and creative (fanciful) trademarks are going to have wider enforceability. Second, the overall makeup of a trademark can determine whether the trademark is infringing. The ‘The Original Griller’ trademark was found to be infringing because the owner emphasized the ‘Griller’ term (and this trademark also seems much more descriptive as a whole), whereas ‘Griller King’ and ‘The Griller Hut’ incorporate a descriptive term into a trademark that creates a more unique and distinctive commercial impression.
$6.1 Million Verdict Upheld in Trademark Lawsuit Between Skydiving Service Competitors
In another case, Skydive Arizona, one of the nation’s largest skydiving centers, won a $6.1M trademark infringement verdict against Skyride, a service that connects skydivers to skydiving centers around the country. Skyride’s marketing strategy apparently included hosting several Arizona skydiving- related websites, including one located at the domain name, skydivearizona.net.
Skydive Arizona actually won its lawsuit on a number of bases, including false advertising, unfair competition, cybersquatting, and of course trademark infringement. The company’s success was based, in part, on the fact that some consumers had purchased certificates from Skyride thinking that they could redeem them with Skydive Arizona—which wasn’t the case.
On appeal, the 9th Circuit Court of Appeals affirmed the $6.1M award.
The Lesson: Trademarks are big business, and misleading consumers and causing confusion can give rise to substantial liability. Intentionally misleading consumers and trying to benefit from someone else’s goodwill will only make matters worse. Here, too, the plaintiff’s trademark (Skydive Arizona) seems fairly descriptive, but the company was nonetheless able to obtain a substantial verdict due to the defendant’s apparent willful conduct.
Jeff Fabian assists business owners in protecting their brands so that they can stay focused on running their businesses. Follow Jeff on Twitter @FabianOnIP.
This article is provided for informational purposes only, and does not constitute legal advice.
Female NASCAR Driver Learns Life Lessons and Transitions to Succesful Franchisee
[Matt Wilson, FranchiseHelp]: Hello everybody. This is Matt Wilson coming from FranchiseHelp.com. I am here with Deborah Renshaw-Parker,former NASCAR driver and Apricot Lane Boutique franchisee. Deborah is coming to us from Bowling Green, Kentucky, where she owns an Apricot Lane franchise. We want to pick her brain a little bit. Thanks for coming on the show.
New Government Data Will Measure the Economic Impact of Franchising
According to the International Franchise Association (IFA), newly released data in the 2007 Economic Census Franchise Report will help quantify the economic impact of franchising. “Determining the economic impact of franchising is a key strategic priority for the IFA in our efforts to showcase the importance of franchising to the U.S. economy,” said Ken Walker, IFA chairman as well as chairman and CEO of Driven Brands.
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The most successful entrepreneurs, however, eventually come to recognize that achieving long-term success requires that they step back and put in place the right systems, processes, and people to expand their company beyond what any one individual -- no matter how motivated and sleep deprived -- could possibly manage on his or her own. Once a business owner sees what's possible when employees take on operational responsibilities that free management to actually manage instead of act like their own employee, he or she quickly understands the enormous power that scalability means for a business.