Confusingly Similar Explained

If you take Exit 208 will you be able to have lunch at PANERA?

Did you have to look again to be sure?

Here’s a close up.

In this case, it’s not infringement because Panera Bread Co. started off as Saint Louis Bread Co. JAB Holding Company changed the name to PANERA but has left the original name on some locations in and around St. Louis, MO.

Let’s pretend Saint Louis Bread Co. wasn’t legit, would the sign be OK?

Trademarks don’t have to be identical for there to be a problem, they just have to be “confusingly similar.” You might think Saint Louis Bread Co. would be in the clear because SAINT LOUIS BREAD CO. is completely different from PANERA but that’s not how it works:

  • The logo is identical: Stylized woman holding a loaf of bread.
  • The fonts used are the same: Look at the “a” and the “n” in each sign.
  • It’s hard to tell because of the lighting, but the colors are also the same.

It also matters that potential customers are whizzing by at 65 miles per hour. They catch a glimpse of the sign and think, “I could do with a Napa almond chicken salad sandwich right about now.” They take Exit 208 and, instead of finding PANERA, they find SAINT LOUIS BREAD CO. But, what the hell, they’ve already left the freeway and their stomachs are grumbling. This is “initial interest confusion” and it counts as infringement.

Big shout out to Cassandra G. for seeing this road sign, catching a photo, and sending it to me.

Panera Bread image (C) 2015 Dannyhouk, CC BY-SA 4.0, via Wikimedia Commons.

Photo of road sign (C) 2021 Cassandra Glaser. Used with permission.

Secret Boston vs. Secret Boston

People in Boston are confused and it’s easy to see why:

Secret BostonTM is promoting an exhibit called “Imagine Van Gogh” through its website (I’ll call this company “McCormack” because it was founded by Michelle McCormack.)

Meanwhile, a different Secret Boston is promoting an exhibit called “Van Gogh: The Immersive Experience” through its website (I’ll call this company “Fever” because the website’s owned by Fever Labs, Inc.)

This sucks for customers. McCormack’s been getting calls from people who thought they were buying a ticket to her event but were actually buying a ticket to Fever’s event.

It’s also bad for the companies involved: They lose business and end up with pissed off customers.

Who’s in the wrong here? Based on the facts I can find, I’d say McCormack’s company has rights to SECRET BOSTON and Fever is infringing.

McCormack says she started using SECRET BOSTON in 2011. There are at least three facts pointing to a later use by Fiver.

  • As of August 2019, Fever’s website had nothing but a broken redirect.
  • Fever’s trademark registration for SECRET NYC claims first use in 2016. It’s hard to imagine its first use of SECRET BOSTON was 5 years earlier.
  • McCormack claims Fever tried to buy her trademark rights to SECRET BOSTON in 2016 and she refused to sell.

As of this writing McCormack and Fever are duking it out. Unless there are some key facts I don’t know about, Fever needs to find a way forward that respects McCormack’s clear prior rights.

Shout out to Bill B. who brought this to my attention.

Madea and Captain Kangaroo

We recently explored whether a person’s name can be a trademark. Today we’ll look at whether these can be trademarks:

  • Characters from a TV or movie franchise: MADEA®, CAPTAIN KANGAROO®
  • Singer/songwriters: MEGAN THEE STALLION®, 50 CENT®
  • Comedic alter egos[i]: MOMS MABLY, MR BEAN®
  • Burlesque dancers and drag queens: DITA VON TEESE®, THE WORLD FAMOUS *BOB*SM

The name of a character in a book or movie isn’t automatically a trademark. Amanda Wallace, Viola Davis’s highly memorable character in Suicide Squad®, isn’t a trademark and is very unlikely ever to become one. KATNISS EVERDEEN® is a registered trademark but not as a character in books and movies but for merchandise like action figures and backpacks.[ii]

Stage names of singer/songwriters are trademarks and are often registered for some type of entertainment services. MEGAN THEE STALLION® is a registered trademark for merchandise but also for “entertainment in the nature of live performances by a musical artist or entertainer.” Curtis J. Jackson III has six live registrations for 50 CENT® for entertainment services and lots of products, too.

Comedic alter egos, burlesque dancers, and drag queens are trademarks and are often registered for entertainment services and/or swag. BORAT® is a registered trademark but only for shirts. DITA VON TEESE® is registered for entertainment services but also retail store service, candles, apparel, perfume, and lipstick.

There are so many of these types of names that are also trademarks. Which ones can you think of?

[i] I’m fascinated by the trademark conundrum of STEPHEN COLBERT. Not the “real” Stephen Colbert, but the Stephen Colbert who Stephen Colbert played for so many years on the Colbert Report. Is this just one trademark that changed its branding message or is there STEPHEN COLBERT as a character and STEPHEN COLBERT as an actual person?

[ii] Wonderfully, the name of the company that owns the trademark rights is District 12 LLC.