Sunday, October 28, 2007

Not Fooling Anybody

The title of the website to which this post refers suggests that standard confusion claims against the businesses that have set up shop in places formerly occupied by distinctive fast food chains could not succeed. But there's always initial interest confusion and dilution. For your consideration:

White Castle to Veggie Castle, Mister Donut to Master Donut, Dairy Queen to Dairy K, Pizza Hut to Chinese Hut.

Could the new occupier defend against trademark claims by saying there's no use of a distinctive building shape as a mark, just as someone might refill a discarded Coke bottle? This may be another puzzle of "use as a mark," where one user really is using a trade dress as a mark but another really isn't. Without getting into that debate, one could resolve the issue in favor of the new occupier by imposing on the trademark owner a duty to remove the distinctive features of its building before leaving, just as some cases impose on trademark owners the duty to remove marks before putting damaged goods on the market as salvage. Having let the goods out into the market, the owner cannot then impose on someone a noncontractual duty to alter them. It might be reasonable to say the same thing here -- or maybe not, especially given that these are all likely to be franchises, and the franchisor may not have control over the way in which the ex-franchisee disposes of the building.

For further consideration, there's KFC to Gilstrap Chiropractic, with the KFC bucket still on the sign. And a newspaper story in which the chiropractor is quoted:
Gilstrap said he decided to leave the bucket on the sign because it’s such a longtime fixture.

“That bucket has been there for somewhere around 30 years,” he said. “Everybody knows where the old KFC is, but they don’t know where my office is.”

They do now.

“I don’t go anywhere where somebody doesn’t say, “Hey, you’re that KFC chiropractor.’”

And the winner: Texaco to Exaco. The thing is, I can almost construct a parody defense, given the independent meaning of the "ex" prefix.

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