In Nola Spice Designs L.L.C. v. Haydel Enterprises, Inc., the Fifth Circuit recently cancelled a New Orleans bakery’s word and design trademarks for “Mardi Gras Bead Dog” – the bakery’s mascot based on the Mardi Gras tradition of parade-goers twisting their plastic beads into the shape of a dog. The appellate court also affirmed the Eastern District of Louisiana’s summary judgment ruling that an online jewelry store could not be liable for trademark and copyright infringement for selling jewelry featuring bead dog trinkets that resembled the bakery’s mascot.  Specifically, the Fifth Circuit explained that the bakery’s “Mardi Gras Bead Dog” marks were not entitled to trademark protection because they are descriptive (in that they convey information about the bakery’s clothing, jewelry, and pastry products) and have not acquired secondary meaning.  “Secondary meaning occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product [here, the bakery] rather than the product itself.”   “In other words, the mark must denote to the consumer a single thing coming from a single source.”

The Fifth Circuit stressed that the bakery’s burden to show secondary meaning  is a “substantial” one and “requires a high degree of proof,” based on: (1) length and manner of use of the mark, (2) volume of sales, (3) amount and manner of advertising, (4) nature of use of the mark in newspapers and magazines, (5) consumer-survey evidence, (6) direct consumer testimony, and (7) the other party’s intent in copying the mark. Considering these factors, the appellate court found that the overwhelming evidence demonstrates that the bakery’s marks are not distinctive because of, among other things, (1) the “relatively brief” duration  (3.5 years) of the bakery’s use of the mark before the online jewelry store began selling bead dog jewelry, (2) the bakery’s “low” sales volume ($30,500 for 380 clothing and jewelry items over 6 years), (3) lack of promotional efforts linking, in the minds of the consumers, the bakery and its bead dog design, (4)  “slim” press coverage (in the form of just a few articles) of the bakery’s marks,  and the bakery’s failure to offer any (5) consumer testimony, (6) survey evidence, or (7) evidence demonstrating the online jewelry store’s intent to copy the bakery’s trademarks.  As a result, the district court properly granted summary judgment for the online jewelry store on the bakery’s trademark claims because the bakery failed to raise a fact issue on whether the bakery’s trademarks had acquired secondary meaning.

Because of the lack of secondary meaning, the Fifth Circuit also affirmed the district court’s cancellation of the bakery’s word and design trademark registrations for clothing, jewelry, and king cake pastries featuring the “Mardi Gras Bead Dog.”  In addition, the Fifth Circuit ruled that the district court properly tossed out the bakery’s copyright infringement claim against the online jewelry store because no reasonable jury could conclude that the parties’ bead dogs are substantially similar in protectable expression (i.e., the non-anatomical features on each of the parties’ dog replicas).

The Nola decision serves as a reminder to trademark and copyright holders that, despite receiving registrations, their intellectual property rights are not absolute.  In this case, the Fifth Circuit let the bead dog off the bakery’s proverbial leash, and highlighted the high standards and fact-intensive inquiries involved in order to maintain and enforce intellectual property rights.

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