Is this the Krusty Krab? No, This is a Trademark.
What do the Krusty Krab, the General Lee, and the Daily Planet all have in common? They all have been granted trademark protection, despite not being referenced in the titles of their respective fictional universes.
Recently, the Fifth Circuit Court of Appeals ruled in favor of Viacom International in a trademark dispute over the rights to “The Krusty Krab” restaurant name featured in the popular Nickelodeon television show “SpongeBob SquarePants.”
This dispute arose after Javier Ramos Jr., a Texas restaurateur, sought to open seafood restaurants in Los Angeles and Houston called The Krusty Krab.
Viacom had not registered the name “The Krusty Krab” with the United States Patent and Trademark Office. Seeing that it was not registered there, Ramos applied to use the “The Krusty Krab” name, and was granted permission from the U.S. Patent and Trademark Office.
The ensuing litigation obstructed Ramos’s business plans, so as of February, when the case was decided, Ramos had not yet chosen a theme or décor for the restaurants. Ramos’s attorney argued that Viacom should not be able to trademark an ornamental backdrop in a cartoon show.
In response, the attorney for Viacom argued that “The Krusty Krab” was the “central ingredient” of the SpongeBob SquarePants show where the title namesake works.
The three judges hearing the case agreed with Viacom’s attorney and ruled that the use of “The Krusty Krab” in a proposed restaurant name created a likelihood of confusion among consumers.
Writing for the panel of judges, Judge Pricilla Owen said that name was important enough to merit protections despite not being the title of the show.
She based her reasoning in the fact that the restaurant had appeared in over 80% of SpongeBob SquarePants episodes and two feature films since the show premiered back in 1999.
Additionally, she analogized the “The Krusty Krab” mark to other critical elements found in famous works of fiction that received trademark protection, such as the “General Lee” automobile in “The Dukes of Hazard” or the “Daily Planet” newspaper featured in “Superman.”
Perhaps the most significant part of this ruling is that a mark that had not yet been federally registered was granted protection, despite another entity having properly received an allowance from the U.S. Patent and Trademark Office to use the mark.
This ultimately strengthens the rights of the owners of ubiquitous content, who may be emboldened to send more cease and desist letters to businesses that they feel are profiting off of important content that does not appear in the titles of shows.
It is not unheard of to see restaurants that incorporate popular references into their names based on televisions shows or other well known works of fiction.
These places, while not explicitly mentioning the names of shows they may or may not be based off of, may be in jeopardy of being sued for trademark infringement considering that this court decision essentially thwarted Ramos’s otherwise proper attempt to properly trademark the name “The Krusty Krab.”
Another important part of the ruling has to do with the fact that Ramos was still found to be infringing on the Viacom’s intellectual property despite having never opened his restaurant or determining its theme. This, in effect lowers the bar for what is needed to prove trademark infringement and empowers corporate owners of popular content to enforce their rights.
The attorney for Ramos argued that this would have a chilling effect on business owners if they could be held liable for merely filing an intent-to-use trademark application.
While Viacom’s spokesman Alex Rindler was quoted by the Courthouse News Service as saying
“We are pleased with the decision to affirm the lower court’s ruling that Viacom’s rights in The Krusty Krab mark are strong and deserve protection from infringement.”
It is too soon to tell what effect this ruling will have on business owners seeking intent-to-use applications. Yet, one thing is certain. Hiring an attorney to handle these questions and concerns is still important when considering the filing of an application for any form of trademark protection with the U.S. Patent and Trademark Office.
While this ruling may not affect most people seeking to file a trademark application, it does provide a cautionary tale to anyone thinking about filing a trademark who may be unaware of a popular element in a work of fiction.
For example, if you do not have a subscription to Home Box Office and have never seen the hit TV show “Game of Thrones,” you may run into legal trouble if you decided to create a business with the name “King’s Landing” or even “The Wall.”
Both terms are central to the plot of the show, yet, if you have never watched it before or heard of these concepts, you could unknowingly be subjecting yourself to trademark infringement liability.
Claiming ignorance of these concepts would also likely fail, as Ramos’s attorney offered this defense when he told the court that Ramos got the name “Krusty Krab” from the crust glaze applied to cooked seafood, to no avail.
As there are likely certain pop culture references which may not be immediately apparent to every trademark filer, it is advised that business owners consult with a trademark attorney before attempting to file a trademark application.
Disclaimer: This article is not intended to be legal advice and is meant to be for educational or informational purposes only. Please do not use the article or contents of the article without permission. For legal advice and questions, please contact attorney Vincent LoTempio.