Pie based trademark infringement suit against newspaper dismissed. RUPP v. COURIER

Trademark law protects the commercial identity or brand of a business by discouraging other businesses from adopting a name or logo that is “confusingly similar” to the brand of another business. Traditionally a trademark is thought of as a symbol, word or phrase but anything that a business uses to brand its goods can be eligible for trademark protection. In the United States a trademark owner can register their trademark with the United States Patent and Trademark Office to strengthen the rights associated with the trademark. However, registration of a trademark is not required for a trademark owner to claim priority to a trademark. The first business to use a trademark to brand goods is considered the senior user of the trademark. Subsequent users of the trademark are considered junior users. If a junior user brands products in a way that is likely to cause consumers to confuse the junior users products with the senior users products, that can be considered trademark infringement.

The rights granted to a trademark owner are relatively broad, however there are some limits. Trademark law does not grant the owner of a trademark a right to stop all use of a trademarked word or phrase. Fair use is an important limitation to the rights granted to a trademark owner. But more fundamentally, if a trademarked word is used in a non-trademark way, then consumers confusion cannot exist. If consumers are not likely to be confused then trademark infringement has not occurred.

ALAN RUPP v. THE COURIER JOURNAL, INC., 3:18-CV-277 (W.D.KY 2020) is a case which illustrates a trademark being used in a non-trademark way.

The plaintiff in this case owns the trademark DERBY-PIE for a “well-known chocolate nut pie” sold in the United States. The trademark is registered with the United States Patent and Trademark Office. First created in 1954 at the Melrose Inn in Prospect, Kentucky, DERBY-PIE® is handcrafted by folding “[p]remium chocolate and choice walnuts” into a “decadent filing” and baking it in a “delicate crust.”

The defendant in this case is a newspaper publisher. On the day of the Kentucky Derby in 2017, Defendant published an article with the headline, “Bourbon makes this Derby pie a state original.” In the article, Defendant provided the recipe for a “Derby chocolate-walnut pie”. Plaintiff sent a letter to Defendant contending the article “constitutes knowing infringement” of the plaintiff’s trademark.

In June 2017, Defendant published a second article about Derby City Macarons, an independent, locally owned shop specializing in macrons, the “French almond flour pastry.” In the article Defendant captioned a photograph with the phrase “Derby Pie, Mint Julep and Peach Tea macarons from Derby City Macarons.”

In May 2018, Plaintiff filed a trademark infringement suit against Defendant, alleging that Defendant violated 15 U.S.C.A. § 1114 and 15 U.S.C.A. § 1125 of the Lanham Act by publishing the Articles. Plaintiff demanded compensatory damages of $250,000 and punitive damages of $750,000. Defendant moved that the complaint be dismissed for failure to state a claim.

The court granted Defendant’s motion to dismiss. The court found that Plaintiff did not plausibly establish that there is a risk of consumer confusion because both Articles explicitly and repeatedly identify the source of the product as being other than DERBY-PIE. The first article, “Chocolate-walnut bourbon pie from Captain’s Quarters” identifies the source of the recipe as Captain’s Quarters, not DERBY-PIE. The second article used Derby Pie to describe the flavor of a macaroon, not to imply that the macaroon was produced by DERBY-PIE. The court concluded that neither article used Derby pie as a trademark to indicate the source of a product.

Because Defendant used Derby pie in a non-trademark way, the court held that trademark infringement laws do not apply.

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