court declines to drop hammer on competing game despite registrations

WRB, Inc. v. DAMM, LLC, 2022 WL 136914, No. 21-CV-1899 (NEB/TNL) (D. Minn. Jan. 14, 2022)

The court denies a preliminary injunction in this dispute between makers of stump-hammering games, finding issues of fact as to whether the claimed word mark is actually generic and as to likely confusion, but finds that the trade dress of plaintiff’s stump-hammering game isn’t functional (at this stage) because you can hammer nails into things other than stumps. This seems wrong to me—like holding a skateboard nonfunctional because you can also use roller skates if you want personal wheels, or the Dippin’ Dots ice cream configuration nonfunctional because one can eat regular ice cream instead—but does provide a nice illustration of the importance of market definition to functionality determinations.

There is a German drinking game involving striking nails with a hammer into a stump of wood. WRB has an incontestable registration for “Hammer-Schlagen” and a registration for the trade dress of its stump, cross-peen hammer, and nails: specifically, “a three-dimensional configuration ... comprising of a cylindrical cross-section of a tree with nails positioned around the outer circumference of its upward facing flat circular surface, and a cross-peen hammer,” issued in 2018. WRB offers a version of this game at various festivals such as local Octoberfests.  DAMM sells a different version of the game, called “Minneschlagen,” in an at-home kit.

“The Minneschlagen stump is smaller than the Hammer-Schlagen stump. It comes in a crate with a small finishing hammer and a bag of nails. The stump features the Minneschlagen logo—an outline of the state of Minnesota with ‘MINNESCHLAGEN’ written in capital letters.” DAMM has a registration for “Minneschlagen.”

“Hammer” and “schlagen” are German words, but the parties dispute whether the term “hammerschlagen” is a German word. WRB’s word mark registration states that “the English translation of ‘hammer-schlagen’ ... is ‘hammer beating.’ ”

However, “English-speaking Facebook users use “Hammer-Schlagen” to refer to a game; it is not clear whether the users are referring to the Hammer-Schlagen branded game or a more generic version.” E.g.,

“It’s called hammerschlagen where I have played it. Very entertaining to play!” At least some stumps shown in social media posts tagged “hammerschlagen” are not WRB stumps.

“Although DAMM does not describe Minneschlagen as hammerschlagen, Tyler Winkey, a relative of a DAMM founder, allegedly described Minneschlagen as a ‘portable hammerschlagen set.’ And some users have commented that Minneschlagen is a “knock off” of hammerschlagen or described it as hammerschlagen.”

DAMM also submitted evidence that a Google or Amazon search for “hammerschlagen” yields hammers, nails, and round pieces of wood—not just links to the WRB’s product or site, though the court wasn’t sure how to weigh Google/Amazon search results because they were “algorithmically” produced. (How does the court think other results are produced? I think the court means “ranked in some nontransparent way,” which is true and kind of interesting—both G and A have incentives to try to give people the most useful results, but how should we think about that in TM terms, and would we need a search expert to understand how we should think about that?)

There were alternatives to the stump: “Apparently, people also pound nails into other objects for fun. WRB submits several examples of people hitting nails into pieces of lumber as a game. These lumber-based games are likely cheaper to assemble than stump-based nail-pounding games (citing a source titled “The Hardest Thing About Hammerschlagen Is Scoring a Tree Stump”).

WRB had a presumption of ownership for both “Hammer-Schlagen” and trade dress because of its registrations. However, genericity can defeat incontestability, and there was a fact issue at this stage about whether the word was generic. As noted, the court wasn’t so sure about Google and Amazon results, but “the Facebook posts suggest generic use, at least by some consumers.” Thus, WRB wasn’t likely to succeed on ownership.

Registration of the trade dress also gave it a presumption of nonfunctionality. The court considered the trade dress as a whole, not the stump, cross-peen hammer, and nails separately (but see Groeneveld v. Lubecore, holding that where every feature is functional the combination does not become more than its parts). “[G]iven the many other nail-pounding games that use other shapes of wood, WRB will likely be able to show that the stump shape itself is aesthetic” and thus nonfunctional.

“WRB is entitled to a strong presumption of secondary meaning (and thus acquired distinctiveness) because the U.S. PTO already determined the mark has secondary meaning.” However, “DAMM presents sufficient evidence that consumers use ‘hammerschlagen’ and ‘the stump’ to name and identify a game not associated with WRB,” suggesting that it could meet its burden of showing nondistinctiveness. WRB pointed to “promotions and features in magazines,” but at least one of those featured an image of the stump, hammer and nails with no reference to WRB or “Hammer-Schlagen,” “so it is as likely the flyer is evidence of generic use as of acquired distinctiveness.” Likewise the court discounted declarations from coordinators of the Twin Cities and Northwest Oktoberfests that most attendees would associate “the round stump with nails around the perimeter and a cross-peen hammer” with WRB’s game design, because those were people in the trade, not ordinary consumers.

Even if WRB showed ownership, it didn’t show likely confusion at this stage. The fact question about whether there was even distinctiveness also weighed against finding likely confusion. Nor were the parties’ marks highly similar:

Minneschlagen is sold in a wood crate with rope handles, and the crate disassembles to reveal a small (10–14 inch) stump, a small finishing hammer, and a bag of nails. The Minneschlagen logo—“Minneschlagen” written over an outline of the state of Minnesota—features prominently on the stump and the bag of nails. In contrast, at the hearing on this motion, Counsel for Hammer-Schlagen explained that Hammer-Schlagen sets up large stumps, with large cross-peen hammers, and nails, under tents at events. At these events, WRB passes out stickers with innuendo such as, “I Got Nailed” and “Got Wood?” Its advertising is in orange with block letters and a drawing of a hammer. Each leaves a consumer with a different first impression—DAMM’s suggests a homey, Minnesota game for any occasion, and WRBs is a rugged, spirited, outdoor party game.

Although the products’ names both included “schlagen,” “[t]he use of identical, even dominant, words in common does not automatically mean that two marks are similar.” “The Court will not find names to be confusingly similar where the only similarity is a word in a foreign language [that means something relevant to the product].”

Overlap in markets: “WRB sells its service (and not a take-home game) at the Twin Cities Oktoberfest, while Minneschlagen targets Minnesota consumers with its name and the outline of the state of Minnesota on the packaging. But even in Minnesota markets, consumers will not likely be confused by the similarities given the differences in overall impression and because WRB sells a service and DAMM sells a product.” The good/service distinction also increased the competitive separation between the parties, making confusion less likely.

Intent: “DAMM’s knowledge of WRB’s product does not show DAMM intended to confuse consumers.” Their shared use of “schlagen” had a non-goodwill-based explaination, and “Minneschlagen features its own logo prominently, which suggests DAMM’s intent to represent its own brand to consumers and not to copy,” as did its additional packaging and portable size.

Consumers’ degree of care: hard to say; didn’t favor either party.

Actual confusion: The Facebook posts’ meaning was ambiguous; they could show confusion or genericity. Declarations from two Oktoberfest coordinators who attest that they “would have assumed Minneschlagen’s product is affiliated with WRB” also didn’t show actual confusion “because the coordinators themselves were not confused nor do they report knowing of attendees who were confused.”

No injunction would issue.