10 Trademark Cases About Yo Mama

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
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Anna Jarvis led the efforts to establish the first official celebration of Mother’s Day in 1908, during which she honored her own mother, Ann Maria Reeves Jarvis, a Civil War-era social activist. But about a dozen years after that first celebration, Anna Jarvis had become the holiday’s most vocal opponent. Why? Commercialization. The floral and greeting card industries had already taken over her idea, converting sentimentality into sales. Jarvis, who never became a mother herself, is reported to have said:

A printed card means nothing except that you are too lazy to write to the woman who has done more for you than anyone in the world. And candy! You take a box to Mother—and then eat most of it yourself. A pretty sentiment.

Of course, Jarvis lost her battle against the commodification of Mother’s Day. Today, visual depictions of motherhood remain common commercial signifiers that are frequently used as trademarks. And use as trademarks means legal disputes over trademarks. In honor of Mother’s Day, here are ten cases about maternal trademarks.

Mama Mia’s Classic Pizza

Everyone reading this probably grew up somewhere in the vicinity of a pizza place named after someone else’s mama.  For me, it was Mama’s Pizzeria in Bala Cynwyd, Pa., which I mention only because it sits right next to West Laurel Hill Cemetery, where both Anna Jarvis and her mother are buried. Anyway, when MAMA MIA’S CLASSIC PIZZA tried to register its name as a mark for restaurant services, the trademark examiner refused the registration on the ground that it closely resembled four other registered marks for food, including MAMA-MIA’S KITCHEN for pizza, MAMA MIA mozzarella, MAMA MIA Italian bread, and MAMA MIA! PASTA.  The petitioner appealed, arguing that, because literally everyone and their mother used the term “Mama Mia” to indicate good Italian food, customers have been conditioned to look to the other elements of these marks as a means of distinguishing the source. Therefore, shared use of the phrase “Mama Mia” should not block its registration. The Trademark Trial and Appeal Board (TTAB) agreed, and reversed the refusal. In re Nice N Easy Grocery Shoppes, Inc., Serial No. 75/492,944 (Trademark Trial & App. Bd., March 7, 2001).

Mothers Against Drunk Driving

Founded in 1980, MOTHERS AGAINST DRUNK DRIVING, or MADD, is probably one of the most easily recognizable non-profit trademarks in the country.  In 2002, MADD brought a trademark lawsuit against DADS AND MOMS AGAINST DRUG DEALERS, or DAMMADD, a New York organization founded in 2001. After failing to get jurisdiction over DAMMADD in MADD’s home state of Texas, Mothers Against Drunk Driving v. DAMMADD, Inc., Case No. 3:02-cv-1712 (N.D. Tex. 2002), MADD refiled in the Southern District of New York. The Parties settled the matter in 2006: MADD dismissed the claims, and DAMMADD still appears to be a going concern. Mothers Against Drunk Driving v. DAMMADD, Inc., Case No. 3:03-cv-01306 (S.D.N.Y. 2003). MADD more recently brought another trademark suit against a South Carolina couple that was doing business as MODD (MOTHERS OF DRUNK DRIVERS). That matter was resolved earlier this year in a consent judgment under which MODD agreed to discontinue the use of its name. Mothers Against Drunk Driving v. Jarrell, Case No. 2:16-cv-03289 (D.S.C. 2016).

Joe Momma’s

JOE MOMMA’S PLACE, a pizzeria and bar in Osage Beach, Missouri, sought to register its name as a trademark, but the registration was refused in light of the preexisting mark for JOE MAMMA’S Coffee of Rockville, Maryland. The TTAB rejected the petitioner’s argument that its mark would be distinguished in the minds of consumers by the word “place,” which the TTAB found to be merely descriptive of “a business establishment.” The TTAB affirmed refusal, holding that consumers would shorten both names to “Joe Mamma” in their minds and then would be too lazy to tell them apart, because both marks do little more than “identify a business run by” Joe Mamma. In re Duncan, Serial No. 85909106 (Trademark Trial & App. Bd., April 23, 2015).

Bad Mother F#$%er

In 2003, CFE Racing Products launched the “BMF” line of aftermarket auto parts, named for the three word phrase on Samuel L. Jackson’s wallet in the movie Pulp Fiction (“Bad Mother Fucker”).  In 2006, another Pulp Fiction fan, inspired by the same wallet, named his own company “BMF WHEELS,” and adopted a logo strikingly similar to the one already in use by CFE’s auto parts line. CFE brought suit for trademark infringement, and prevailed before a federal jury in Michigan. However, after the verdict, the District Court judge decided that it would be sufficient if BMF WHEELS simply redesigned its logo. The District Court therefore refused CFE’s request that it enjoin further use of the BMF WHEELS word mark. On appeal, the Sixth Circuit Court of Appeals held that the District Court’s denial of the requested injunctive relief was inconsistent with the jury verdict, and remanded the matter with orders to issue a more effective remedy. CFE Racing Prods. v. BMF Wheels, Inc., 739 F.3d 571 (6th Cir. 2015).

Inca Mama

Inca Textile’s application to register INCA MAMA for its line of maternity clothing was refused on the grounds of likelihood of confusion with the INCA GIRL design mark for contemporary women’s clothing. On appeal, the TTAB agreed that the marks and their commercial impressions were not identical – indeed, the cited INCA GIRL registration depicted an apparently not-pregnant and “scantily clad” young woman, whereas INCA MAMA gave off an obviously maternal vibe. Nevertheless, the TTAB found that the goods were essentially identical, because the INCA GIRL registration was broad enough to encompass maternity wear. As to INCA MAMA’s argument that maternity wear was sold only to a specific and discerning segment of the clothes-buying public, the TTAB observed that “a pregnancy lasts for approximately nine months,” after which the once-discerning pregnant customers of INCA MAMA would be back to more casual shopping for contemporary clothing at stores featuring INCA GIRL, thus giving rise to a likelihood of confusion. In re Inca Textiles, LLC, Serial No. 78940043 (Trademark Trial & App. Bd., April 30, 2008).

Moms Bang Teens

Can you guess why the MOMSBANGTEENS mark was refused? That’s right; the name of this “adult” website was refused registration under Section 2(a) of the Trademark Act, which precludes registration of “immoral, deceptive or scandalous matter.” The petitioner argued that the term “bang” had numerous meanings that were completely innocuous, for example, as in THE BIG BANG THEORY and CHITTY CHITTY BANG BANG. The record does not indicate whether this argument was made with a straight face but, in any event, the TTAB looked up “bang” in the dictionary and found, no doubt to its utter horror, that it was a slang term for sexual intercourse.  The TTAB also rejected the petitioner’s (much more credible) arguments that “bang” as a synonym for sex had entered the mainstream, and that it was a relatively mild term within the adult entertainment industry. Finally, the petitioner noted that many other adult industry trademarks had been allowed registration despite similar vulgarity (BANG YOU LATER, BANGBUS, etc.), but the TTAB held that it would draw the line at anything involving “teens,” a term that could include children under the age of consent. In re Manwin, Serial No. 85532448 (Trademark Trial & App. Bd., July 3, 2014).

Slap Ya Mama

In 1996, a Louisiana convenience store owned by the Walker family started selling SLAP YA MAMA powdered Cajun seasoning, and soon the Walkers found themselves with a thriving spice business. In 2009, after customers started asking the Walkers about “their new product,” they learned that another company was selling similar spices under the mark PUNCH YA DADDY, packaged in an allegedly similar trade dress.  SLAP YA MAMA filed suit against PUNCH YA DADDY in the Western District of Louisiana. The District Court denied PUNCH YA DADDY’s motion for summary judgment, and the matter settled shortly thereafter. Walker & Sons Inc. v. Punch Ya Daddy LLC, Case No. 6:09-cv-01822 (W.D. La. 2009).

Angry Mama

Hong Kong-based Daka Research developed a microwaveable plastic female character that emits vinegar-laden steam to soften stains in the microwave. When Daka exhibited the prototype at the International Housewares Show in Chicago in 2015, NewMetro placed an order, designed some nifty packaging, and begin selling the product under the name ANGRY-MAMA. Shortly afterwards, however, Daka sold all its rights in the product to Telebrands Corp., a competitor of NewMetro. NewMetro kept selling ANGRY-MAMA, even while Telebrands prepared to market the identical product as ANGRY MAMA (same name without the dash). The parties ended up suing each other in the District of New Jersey for copyright and trademark infringement, with both sides moving for a preliminary injunction. The District Court found that each party was likely to prevail on its respective copyright claim: Telebrands (through Daka) owned the copyrighted sculptural design of the product, but NewMetro was the author of the copyrighted packaging. However, the Court found that neither was likely to prevail on its trademark claims. NewMetro claimed it was the first party to actually sell the product in the United States, while Telebrands claimed that in fact Daka had introduced the product to the American public through the International Housewares Show and a website. Both parties’ cases were heavily dependent on some pretty disputed facts, such as who said what at a meeting in Hong Kong, and precisely how the product was displayed at the Housewares Show. The Court found “simply too many contradictory assertions,” held that the balance of harms was just about even, and refused any injunctive relief. The case subsequently settled. Telebrands Corp. v. NewMetro Design, LLC, 2016 U.S. Dist. LEXIS 157580 (D.N.J., November 10, 2016).

Mother’s Milk Maibock

It seems like it’s impossible to research any trademark issue these days without coming across at least one craft beer case, and Mom marks are no exception.  The Heartland Brewery of New York tried to register MOTHER’S MILK MAIBOCK for beer, but its application was opposed by Traditional Medicinals, a California company that sold MOTHER’S MILK herbal teas and dietary supplements.  The TTAB found that “Mother’s Milk” was the dominant element of both marks (“Maibock” being descriptive or generic for a German beer traditionally consumed to celebrate spring).  Therefore, the TTAB’s decision turned on whether the goods and channels of trade could be considered similar when one beverage was alcoholic and the other was not.  Citing evidence of third parties that sold both tea and beer under the same mark, and noting that both parties’ goods would be available to the general public in grocery stores, the TTAB held that the likelihood of confusion analysis favored the opposer, and affirmed refusal of the registration. Traditional Medicinals, Inc. v. Heartland Brewery, Inc., Opposition No. 91159010 (Trademark Trial & App. Bd., September 20, 2005).

Mother Tucker’s Food Experience

Mother Tucker’s Food Experience was a Canadian family restaurant chain founded in 1975. It boasted fresh bread, a huge range of buffet items made from scratch, and one of the first really big salad bars. Because the restaurants drew heavily on the Niagara Falls area tourist trade, the company advertised in the United States and registered its name with the USPTO in 1982. As many of our readers will know, Section 8 of the Lanham Act, which is intended to clear deadwood off the register, requires the registrant to file a statement after registration, avowing that the mark is still used in commerce. MOTHER TUCKER’S filed such a statement of use just before the end of the deadline for doing so, declaring that the mark was “still in use” for “restaurants.”  However, the USPTO refused to accept the statement because it did not expressly employ the term: “use in commerce.” MOTHER TUCKER’S appealed to the Federal Circuit Court of Appeals, arguing that the “in commerce” omission was a mere technical defect that it should be permitted to cure even though the statutory period had expired. However, in 1991, the Federal Circuit affirmed the cancellation. In re Mother Tucker’s Food Experience, Inc., 925 F. 2d 1402 (Fed. Cir. 1991). MOTHER TUCKER’s changed its name to TUCKER’S MARKETPLACE in 1994, and now goes by the name TUCKER’S. If you are in the area, TUCKER’S is still accepting Mother’s Day brunch reservations.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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