Jesters battle over the right to use “Fool” as a trademark. MOTLEY FOOL v. CRYPTO FOOLS

Jesters battle over the right to use “Fool” as a trademark. MOTLEY FOOL v. CRYPTO FOOLS

Anything used to signal the identity of the producer of a product from competitor’s products can be eligible for trademark protection.  A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with a trademark, however registration is not required to begin using a trademark to brand products.  Obtaining a right to a trademark law in the United States is based on using the trademark in commerce.  The first person to use a trademark to brand products is considered the senior user and has priority over junior users of a trademark.

Trademark infringement is the unauthorized use of a trademark in connection with products in a manner that is likely to cause confusion, deception, or mistake about the source of the products.  When an allegedly infringing mark is not identical to a trademark, the use of the mark may still qualify as an infringement if it is “confusingly similar” to the trademark. When a court is presented with a trademark infringement case and the two marks are not identical the Dupot factors are used to determine if there is a likelihood of confusion between two trademarks. Those factors are: 1) Strength of the senior user’s trademark, 2) Similarity of the trademarks, 3) Similarity of the products or services, 4) Likelihood that the senior user will bridge the gap, 5) The junior user’s intent in adopting the mark, 6) Evidence of actual confusion, 7) Sophistication of the buyers, 8) Quality of the junior user’s products or services, 9) related products and services.  How these factors are applied can be confusing therefore it is helpful to study case law to gain a better understanding.

THE MOTLEY FOOL HOLDINGS, v. THE CRYPTO FOOLS, 1:21-cv-00540 (E.D.VA 2021) is an example of a case where the Dupont factors will play an important roll.

Plaintiff in this case is a leading provider of financial advisory, investment education, and related online information services and newsletters on a wide array of financial subjects, including the stock market, stocks, mutual funds, retirement planning, cryptocurrencies, and other topics in the field of personal finance.  Plaintiff has adopted a humorous theme to its marketing and advertising materials.  Plaintiff humbly presents itself as a FOOL, like the jester in a king’s court, to make its advice more palatable to customers.  Plaintiff has been using the FOOL trademark and jester themed logos since 1993 and have several different trademarks registered with the USPTO. An example of Plaintiff’s trademark is reproduced above.

Defendant is an organization that specializes in cryptocurrency investing.  In September 2020 Defendant attempted to register THE CRYPTO FOOL as a trademark with the USPTO.  An example of Defendant’s trademark is reproduced above.  In 2021 Defendants began making social media posts that featured quotes from Plaintiff’s newsletters and the catch phrase “Know who the real Fools are”.

In May 2021 Plaintiff sued Defendant for trademark infringement, trade dress infringement and unfair competition.  Plaintiff has requested an injunction to prevent Defendant from using jester related imagery in its advertising as well as monetary damages.  While an argument can be made that there are differences between the Plaintiff’s and Defendant’s trademarks, the two trademarks have enough similarities to be considered confusingly similar.  The Defendant choosing a jester themed logo, and taunting Plaintiff in advertisements was not the most intelligent decision.

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