Best Footnote in a Legal Opinion?

FN6: The court imagines an appropriate reaction from SpongeBob SquarePants would be, “Aw, tartar sauce!” SpongeBob SquarePants, Hall Monitor (Nickelodeon television broadcast Aug. 28, 1999).

That footnote is from a Janury 11, 2017 opinion by Judge Gray H. Miller of the Southern District of Texas which granted partial summary judgment to Viacom in its lawsuit against the operator of a proposed restaurant named the “Krusty Krab,” which we all know is this:

krusty_krab

Source: http://spongebob.wikia.com/wiki/Krusty_Krab

A couple of takeaways:

  1. Notice that I said this was a “proposed” restaurant.  How did Viacom find out about it if it was not in operation yet?  Because the operator of the restaurant filed a trademark application for THE KRUSTY KRAB for use with restaurant services.  Companies routinely monitor the USPTO’s trademark application records (i.e. the Official Gazette) so that they can file oppositions to the applications before they mature into registrations.  Except in this case, Viacom chose not to oppose the application at the USPTO level and instead sued in federal court.  (Based on the trademark application timeline, Viacom may have inadvertently missed the window to oppose the application, and since it’s an intent-to-use application, Viacom would have had to wait until the application matured into a registration to then try and cancel it.  If that’s the case, Viacom could have been waiting for up to three years before the applicant filed a statement of use, which is what would then push the application to a registration.)  Procedure nerds might be wondering how the case was ripe for adjudication if the restaurant was not yet in business.  When there is imminent threat of infringement, a case may be ripe for injunctive relief, and that’s what happened here.
  2. Even fictional brands can be protected under trademark law because consumers will expect a connection between the fictional brand and the source of the movie or TV show that uses the fictional brand.  Such as the Simpsons-themed food and beverage at Universal Studios:

img_0096

Source: http://www.foodbeast.com/news/krusty-burger-and-moes-tavern-now-open-at-universal-studios-hollywood/

See also: Springfield Dining at Universal Orlando

Here is the FULL OPINION.

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