Celebrity Trademark Watch: What Do Bob Marley and Chicken Fingers Have in Common?

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
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Apparently, the answer is “One Love.”  On December 6, 2013, Fifty-Six Hope Road Music, Ltd. (“Hope Road”), which controls reggae legend Bob Marley’s estate, filed a federal trademark infringement action against the restaurant company Raising Cane’s USA, LLC (“Raising Cane’s”).  Hope Road alleges ownership of the trademark ONE LOVE in connection with a number of goods and services.  It further claims that Raising Cane’s unauthorized use of the same mark in connection with restaurant services is a violation of Hope Road’s rights.

There seems to be little doubt that Hope Road began using the ONE LOVE mark before Raising Cane’s, perhaps even in connection with restaurant services.  However, the legal difference between common-law trademark rights and rights provided by trademark registrations may prove central to this dispute.

Bob Marley’s ONE LOVE

In 1977, Bob Marley & the Wailers released the song One Love/People Get Ready to international acclaim.  Marley passed away in 1981.  Since that time his fame has only grown.  According to the complaint filed in the federal District of Massachusetts, Marley’s widow and children own Hope Road, which has licensed Marley’s name and image for use in connection with a number of products and services.  In 1991, Hope Road began licensing the mark ONE LOVE, based upon Marley’s iconic song, for use in connection with clothing.  Hope Road subsequently licensed the mark for use with such products as hats, visors, jewelry and incense.  Hope Road owns a single U.S. registration for the mark ONE LOVE in connection with footwear.

The complaint also alleges that in 1999 Hope Road began licensing Marley’s name and image to Universal Studios for use in connection with a restaurant named “Bob Marley, A Tribute to Freedom.”  Hope Road claims that the ONE LOVE mark is used in various ways in the restaurant, such as in the menu.

Raising Cane’s ONE LOVE

Raising Cane’s is a Louisiana-based chain of fast-food restaurants that features chicken fingers and little else except for side items and beverages.  The first location opened in 1996.  Raising Cane’s website claims, “we only serve the highest quality chicken finger meals.  It’s our ONE LOVE®.”  Raising Cane’s has locations in several other states including Texas, Oklahoma, Georgia, Ohio and Massachusetts.  Raising Cane’s also has a U.S. trademark registration for ONE LOVE in connection with restaurant services in which it claims the mark was first used in commerce in 2001.

Who Has the Superior Right to Use ONE LOVE in Connection with Restaurant Services?  

In this case, the answer may hinge on the parties’ trademark registrations.  According the complaint, Hope Road has not registered ONE LOVE in connection with restaurant services but began using ONE LOVE at a restaurant in 1999, before Raising Cane’s first use and before Raising Cane’s obtained its registration.  Because Raising Cane’s applied for and obtained its registration after Hope Road first began using ONE LOVE in connection with restaurant services, how and where Hope Road used its mark is likely to become a significant factual issue in the case.

Common-law trademark rights are geographical in nature and only permit a senior user to exclude junior users from the marketplace in the specific regions where it actually uses the mark.  A trademark registration, on the other hand, provides its owner with a presumption of ownership and national priority rights.  Even so, the United States remains a use-based jurisdiction.  A party who began using a mark first can, in fact, establish priority over another who later registered an identical or similar mark.  Nonetheless, merely relying upon common-law rights has its perils.  A senior common-law trademark owner may find that its rights are limited geographically and not sufficient to enforce against a junior user on a national scale.

Don’t Forget to Register Important Marks for All Associated Goods and Services 

The merits of Hope Road’s action against Raising Cane’s will be decided in due course, but there is already a lesson this case can teach brand owners.  Remember to seek additional registrations when you begin to use your trademarks with new goods and services.  If you don’t, your common-law rights can prove disappointingly inadequate if and when the time comes to expand your brand’s geographic scope.

Image courtesy of Darren and Brad

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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