Legally Speaking: Trademark Silliness in the Courts

John G. Browning Mar. 11, 2010, 7:23am

As a lawyer who's handled trademark infringement lawsuits over the years, I know all too well how seriously companies take their trademarks.

And most of the time, it makes perfect sense; if you're a firm that's invested a great deal in the public's recognition of your product like, for instance, Coca-Cola, you're going to zealously protect the company's hard-won image from any would-be imitators. Sometimes, however, the trademark scuffles between companies just seems a little, well, silly.

By now, you're probably tired of hearing iPhone users proudly proclaim "There's an app for that." But among the iPhone applications that you just can't live without, a clash of titans is brewing.

"iFartMobile," produced by Colorado-based InfoMedi Inc., and "Pull My Finger," produced by Florida's Air-O-Matic Inc., both market an app that - for a mere 99 cents - permits the user to play a variety of simulated flatulence noises. According to some observers, Air-O-Matic's product enjoyed an early lead in the sales war, but iFart pulled ahead in popularity after a marketing campaign that has the Florida company crying foul.

iFart's owner, Joel Comm, came out with a press release and a YouTube video extolling the virtues of his company's fake flatulence app in which he used the phrase "pull my finger" and claimed that his product "has people pulling each other's virtual fingers."

Pull My Finger took offense at the use of the phrase, and demanded that iFart cease and desist from employing that term in its marketing because the company had trademarked it.

Contending that he "never imagined a common phrase like that would qualify for federal trademark status," Comm and InfoMedia have filed a declaractory judgment suit asking a court to declare that iFart Mobile (which Comm describes as "more than another iPhone application . . . a true entertainment machine") is free to use "pull my finger" in its advertising.

I'll pass on any gas-inspired commentary on how this lawsuit might turn out. However, if you ever doubted that the decline of Western civilization is upon us, it's worth noting that the Apple iPhone App Store offers no less than 75 different flatulence simulation software applications from no fewer than 50 different developers.

Meanwhile, most restaurant claims would rather not have you associating their meals with something like angioplasty.

Not the Heart Attack Grill. The Chandler, Ariz., restaurant proudly dishes up high calorie offerings like artery-clogging premium cheeseburgers in an environment calculated to remind you of how unhealthy for you the food might be: waitresses dressed as nurses, signs with EKG monitors on them, offers of free food to patrons weighing over 350 pounds, etc.

Recently, however, Heart Attack Grill owner Jon Basso filed a federal trademark infringement lawsuit against an alleged imitator of a restaurant that caused his blood pressure to go through the roof. According to Basso, the owners of Delray Beach, Fla.'s Heart Stoppers Sports Grill are copying his concept and infringing on his trademark.

The lawsuit recounts about 30 ways in which Heart Stoppers is allegedly similar, right down to decor that includes defibrillators, dialysis machines, tables resembling wheelchairs and salt and pepper dispensers that look like pill bottles.

Heart Stoppers' lawyer, Eric Lee, maintains that the two concepts are different.

"The Arizona restaurant's concept is high-caloric food that is bad for you and will basically kill . . . My guys have a result that is medically themed . . . My clients' restaurant seems more like an actual medical facility."

Heart Attack Grill attorney Robert Kain, who describes his client as "the originator of the medically-themed hamburger grill and restaurant," scoffs at the notion, pointing out that before opening their restaurant in December 2009, Heart Stoppers owners had been in negotiations to acquire a Heart Attack Grill franchise license.

Heart Attack Grill had received extensive media coverage prior to the trademark lawsuit, with features on the Travel Channel and the Food Network among others.

From clogging arteries to clogging the courts, next we turn to the legal dispute raging between automaker Porsche and shoemaker Crocs.

Porsche has filed an injunction against the Colorado-based shoe manufacturer alleging that its "Cayman" model of sandal infringes on the European trademark registration for Porsche's Cayman model car.

I'm not sure how likely it is for consumers to confuse a $29.99 casual shoe with a $51,000 luxury automobile, but that's up to the courts to decide. Perhaps a change of venue to the Cayman Islands is in order.

Finally, we come to a dispute that just might bring a smile to your face - if you don't mind getting sued for it.

Eat'n Park Hospitality Group and EPS Holdings Inc. filed a trademark infringement and unfair competition lawsuit on Dec. 31, 2009, in the U.S. District Court for the Western District of Pennsylvania against Plano, Texas, cookie company Crumb Corps (which sells cookie bouquets under the name Cookies by Design).

Eat'n Park, a Pittsburgh-based company that owns the Eat'n Park Restaurant chain, alleges that the Texas company sells a cookie called "Smiley Faces" that is confusingly similarly to the SMILEY cookies sold in Eat'n Park's restaurants.

The plaintiffs claim they have been selling smiling-face cookies since 1983, and have had the SMILEY trademark since 1982.

Cookies by Design founder Gwen Willhite counters that she's made cookies with a smiling face since 1983.

As with most trademark disputes, now it's up to a federal judge to see how the cookie crumbles.

I'd tell the plaintiffs to "have a nice day," but I don't want to get sued.

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