How The White Tower Burgers Trademark White-Washed, Washed Out, Then Washed Up

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
Contact

Moody's

If you happen to be in the Boston area this August, and you are sick of the Freedom Trail, here’s an idea for a little trademark trail.  Start in Cambridge at Moody’s Falafel Palace and head downtown past Kneeland Street to the waterfront. Then hop on a Harbor Island ferry and get off at Spectacle Island, where a piece of a vintage White Tower Hamburger plate recently washed up on the beach.

The Rise of the Castle

Upton Sinclair’s 1906 novel, The Jungle, discouraged many Americans from eating ground beef, but the owners of White Castle set out to change that.  Founded in 1921 in Kansas, the White Castle restaurants featured a white-washed castle exterior, and a white and steel inside décor, to emphasize cleanliness. The 5 cent burgers were a hit, and dozens of White Castle outlets began opening around the country.

White Castle’s success bred many imitators, the most prolific of which was the White Tower burger chain. Founded in Milwaukee in 1926, White Tower poached White Castle employees to learn its business methods and liberally copied from White Castle’s medieval-ish trade dress, including the crenellated building design.  White Tower even used a slogan evocative of White Castle’s, replacing “Buy ‘Em By the Sack” with “Take Home a Bagful.”

White Tower v. White Castle

Judge Florence Allen

By 1937, White Castle had already brought a trademark action against White Tower, which was pending in Minnesota.  White Tower, apparently unhappy with that venue, cast around for a more favorable forum. It settled  on Michigan, primarily because White Tower had opened up a restaurant in Detroit before White Castle. White Tower filed suit in the Eastern District of Michigan, alleging unfair competition and claiming that it had priority over the name and castle-like building design in Detroit. White Castle filed counterclaims, and both parties asked for an injunction.

The District Court sided with White Castle and found that, even though White Tower opened a store in Detroit first, the widespread White Castle fame had preceded that store, traveling down the highways of America in the bellies of satisfied customers and creating good will in Detroit by word of mouth before either company had an outlet there. Additionally, the Court found that Detroit was within White Castle’s normal scope of expansion.  White Castle’s request for injunctive relief was allowed.

White Tower appealed to the Sixth Circuit, citing the principle that, where a junior user innocently builds a business in a market remote from the senior user, the junior user may not be restrained in that market.  However, the legendary Judge Florence Ellinwood Allen (the first woman to serve as a Circuit Court of Appeals judge, and the first woman to serve as a State Supreme Court justice), held that there was nothing “innocent” about White Tower’s pilfered business model.  The Sixth Circuit affirmed.

Following the Supreme Court’s denial of White Tower’s petition for writ of certiorari, the parties entered into a settlement agreement.  White Tower was permitted to continue to use its name (for a license fee of approximately  $80,000) but would have to abandon certain aspects of its trade dress, including the crenellated building design.  Most White Tower restaurants stuck around under this arrangement, and the chain actually grew.  However, White Tower eventually got out of the restaurant business and transformed itself into the Tombrock real estate company.

The Boston Trademark Trail

KneelandIt is not entirely clear to this author whether Moody’s Falafel Palace in Cambridge was once a White Castle or a White Tower.  If you go to the current owners’ website, you will find links to articles making both claims.  Because the building retained its crenellated roof, it was probably a White Castle. By contrast, a similar building at 20 Kneeland Street in Boston’s Chinatown has lost its crenellation, marking it as a former White Tower.

So, if you own a restaurant in Boston in the 1930’s and suddenly have to change your trade dress, what do you do with all your old plates and cups?  You dump them on Spectacle Island, of course, in the middle of Boston Harbor. Where else?

Spectacle Island was once a bucolic oasis but, by the 1930’s, it had come to serve as a massive trash receptacle. It was so full of trash by the 1950’s that, after a bulldozer actually disappeared into the mountain of rubbish, officials simply abandoned the island to posterity. However, in 1992, excavated dirt from the Big Dig was used to cap the rubbish and resurface the island. It is now a gorgeous 105 acre public park.

Spectacle Island Antique RubbishBut a park with twist.  The old trash still occasionally works its way out of the island and washes up on the beach. As a result, antique beachcombing has become one of the island’s main attractions.  The island’s shores are scattered with beautiful smoothed sea glass, old apothecary bottles, shards of fine china, and tantalizing vignettes of once-famous brand names now literally ground into the dust.

This includes the White Tower plate shard which, after being photographed and spending some time in the visitors’ center, was apparently “released back into the wild” for someone else to find.  So, if you are a trademark enthusiast and decide to visit Spectacle Island,  you may just find a piece of unfair competition history washed up on the beach. But be warned, park regulations will prevent you from “taking home a bagful.”

 

 

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.

© Foley Hoag LLP - Trademark, Copyright & Unfair Competition | Attorney Advertising

Written by:

Foley Hoag LLP - Trademark, Copyright & Unfair Competition
Contact
more
less

Foley Hoag LLP - Trademark, Copyright & Unfair Competition on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.