Nola Spice Designs, L.L.C. v. Haydel Enters. - 783 F.3d 527 (5th Cir. 2015)

Rule:

Trademark infringement claims are governed by the Lanham Act, 15 U.S.C.S. § 1051 et seq. The Lanham Act defines "trademark," in part, as any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. 15 U.S.C.S. § 1127. To prevail on its claim of trademark infringement under the Lanham Act, a plaintiff must show: (1) it possesses valid trademarks; and (2) a defendant's use of the plaintiff's trademarks creates a likelihood of confusion as to source, affiliation, or sponsorship.

Facts:

During Mardi Gras parades in New Orleans, parade "krewes" throw strands of plastic beads to onlookers, who, in turn, have created "bead dogs" by twisting these strands into the shape of a dog. Haydel Enterprises ("Haydel") owns Haydel's Bakery in New Orleans, which makes and sells pastries and cakes, including its popular king cake sold during the Mardi Gras season. In 2008, Haydel commissioned an artist to design a mascot, which was named "Mardi Gras Bead Dog." The United States Patent and Trademark Office ("PTO") issued two trademark registrations to Haydel for, respectively, the phrase "MARDI GRAS BEAD DOG" and its bead dog design. Both registrations cover king cake pastries, jewelry, and clothing. Haydel sells these items in its New Orleans store, online, and through its licensee Fleurty Girl, a New Orleans retailer. In September 2012, Haydel obtained a certificate of copyright registration for its work titled "Bead Dog" in "photograph(s), jewelry design, 2-D artwork, sculpture." Haydel has acknowledged that its mascot "brings to mind the traditional bead dog" made of Mardi Gras beads. Nevertheless, Haydel asserts that its mascot and its use of the phrase "Mardi Gras Bead Dog" differ from the Mardi Gras tradition. In May 2012, Raquel Duarte formed Nola Spice Designs, which sells jewelry and accessories, including necklaces and earrings featuring bead dog trinkets. Duarte sells her jewelry on the Internet under titles that include the phrase "bead dog," but not "Mardi Gras bead dog."  Haydel sent Nola Spice Designs a letter noting Haydel's trademark and copyright in "the bead dog design," and demanding, inter alia, that Nola Spice Designs "remove from [its] website all display, mention of or reference to the bead dog design," and "cease any and all promotion, sale, and/or use" of materials incorporating the bead dog design. Nola Spice Designs filed a complaint against Haydel seeking (1) a declaratory judgment that Nola Spice Designs's activities do not violate the Lanham Act, 15 U.S.C. § 1051 et seq., or any other trademark law; (2) the cancellation of Haydel's trademarks under 15 U.S.C. § 1119; and (3) damages for unfair trade practices under the Louisiana Unfair Trade Practices Act ("LUTPA"), La. Rev. Stat. Ann. § 51:1401 et seq. Haydel asserted counterclaims against Nola Spice Designs and filed a third-party complaint against Duarte, seeking injunctive relief and damages. Specifically, Haydel asserted counterclaims for trademark infringement, unfair competition, and trademark dilution, all in violation of the Lanham Act, unfair trade practices under LUTPA, and copyright infringement in violation of the Copyright Act, 17 U.S.C. § 101 et seq. The parties also filed cross-motions for summary judgment. On August 28, 2013, the district court granted in part and denied in part the motion for summary judgment filed by Nola Spice Designs and Duarte (collectively, "Nola Spice") and denied Haydel's motion for summary judgment. Specifically, the district court granted summary judgment to Nola Spice on its claim for a declaratory judgment that it was not infringing Haydel's trademarks, and the court cancelled those trademarks as unprotectable, but it denied Nola Spice's motion for summary judgment on its LUTPA claims. The district court also granted summary judgment to Nola Spice on Haydel's claims of trademark infringement, unfair competition, trademark dilution, copyright infringement, and unfair trade practices. Haydel timely appealed the district court's August 28 order. Nola Spice did not appeal the district court's dismissal with prejudice of its LUTPA claim.

Issue:

Was a stylized figure of a traditional dog made from Mardi Gras beads entitled to protection for "Mardi Gras Bead Dog" as a word mark or a design mark?

Answer:

No.

Conclusion:

The court held that a stylized figure of a traditional dog made from Mardi Gras beads was not entitled to protection for "Mardi Gras Bead Dog" as a word mark or a design mark since the marks were descriptive of the trademark owner's Mardi Gras-themed products rather than inherently distinctive, the design was substantially similar to dogs traditionally crafted from Mardi Gras beads, and the marks did not acquire any secondary meaning. Since the marks were not distinctive, the owner's claims for trademark infringement, unfair competition, and trademark dilution were precluded. There was no substantial similarity between the owner's copyrighted bead dog and an alleged infringer's bead dog to support copyright infringement since the protectable element of the owner's derivative bead dog of a collar composed of beads was only minimally original and significant.