“One Love” Indeed – Bob Marley Estate Sues Chicken Chain
The estate of Bob Marley has filed suit against a Louisiana-based chicken finger restaurant chain, Raising Cane’s, over Raising Cane’s registration and use of the trademark ONE LOVE. Whose rights to “One Love” are superior, and why did the Marley estate wait so long to take action?
According to the initial complaint (which can be read here), the song “One Love” was originally recorded by Bob Marley in 1965. The more well-known recording appeared on Bob Marley & the Wailers’ 1977 album Exodus. The Marley estate (which operates as Fifty-Six Hope Road, but I’ll just call them “the Marley estate” in this blog post for the sake of clarity) claims to have used MARLEY ONE LOVE as a trademark for clothing since 1991, and has licensed the right to use the mark MARLEY ONE LOVE to restaurants since 1999 (they cite one restaurant owned by Universal Studios as a licensee.) In 2011, they were approached by an Alabama restauranteur about another Marley-themed restaurant. At that time, the Marley estate applied to the United States Patent and Trademark Office (USPTO) to protect ONE LOVE as a trademark for restaurants and related services (you can see the application here.) That application was blocked due to a prior registration owned by Raising Cane’s.
Raising Cane’s claims to have over 120 locations serving fried chicken fingers. They applied in 2002 to register the trademark RAISING CANE’S CHICKEN FINGERS ONE LOVE, and registration was granted in 2003 (see the registration here). In 2004, they applied to register the mark ONE LOVE; registration was granted in 2005 (see the registration here.) The Marley estate claims to have had no knowledge of Raising Cane’s applications at the time. It’s not clear when they gained that knowledge, although a search of the online USPTO records would have revealed this information at any time during this process. One would think that the Marley estate, seeing such great value in the ONE LOVE mark, would have been vigilant in regularly reviewing USPTO filings related to the mark, along with uses of “One Love” in the real world. It’s hard to imagine not noticing that 120 or so restaurants are using what you believe is your trademark. Nonetheless, the Marley estate filed their application.
Todd Graves, CEO of Raising Cane’s, stated:
Raising Cane’s is a focused-menu restaurant concept serving customers quality chicken finger meals quickly and conveniently. Raising Cane’s has used the ONE LOVE® mark in the Restaurant Services classification since as early as 2001 without conflict. We serve one thing — quality chicken finger meals — and strive to do it better than anyone else. It’s our ONE LOVE.
After negotiations between the parties failed, the Marley estate sued Raising Cane’s on December 6, 2013 for trademark infringement, false association, and trademark dilution, cancellation of the trademark registrations, common law trademark infringement, and intentional interference with advantageous business relations. The Marley estate seeks cancellation of Raising Cane’s trademark registrations, damages, and attorney’s fees.
It appears that a core element of the Marley estate’s complaint is their Trademark Dilution claim. I’ve discussed Trademark Dilution several times before (here’s one example). Trademark Dilution is a claim by a trademark owner that the use of the mark by the defendant would diminish the goodwill embodied in the trademark – even if the defendant is not using the mark in connection with similar goods or services. What does that all mean? A claim of trademark dilution can only be asserted by the owner of a famous trademark. The mark must be nationally well known. Ford, Disney, Coca-Cola, and…Ben & Jerry’s, are the types of marks that would clearly qualify for protection under the Trademark Dilution Revision Act of 2006.
Trademark Dilution can be understood, in part, as a sort of backup for parties that seek to assert a claim Trademark Infringement. Infringement is much more clear and easier to prove, if the facts line up. Dilution may apply when there is no infringement, exactly, but the defendant is still trading on the goodwill of a famous trademark.
The Marley estate states that:
The MARLEY ONE LOVE mark is inherently distinctive and has acquired secondary meaning by extensive, continuous, and substantially exclusive use by Hope Road. The Bob Marley and MARLEY ONE LOVE marks are famous and distinctive within the meaning of the Trademark Dilution Act. The applications and registrations for the CANE’s ONE LOVE marks were filed and issued after the MARLEY ONE LOVE mark had already become famous and distinctive and after the MARLEY ONE LOVE Mark was being used commercially by Hope Road.
The essential point here is the claim that MARLEY ONE LOVE, and, presumably, ONE LOVE by itself, are “famous and distinctive” – meaning, the marks are so well-known and associated with Marley that the Marley estate can claim sole ownership of the marks for use as trademarks on almost any goods or services.
Does this claim make sense? I don’t think there’s any question that the song “One Love” is strongly associated with Bob Marley in the minds of a large number of consumers. The BBC named “One Love” the song of the (previous) millennium, or something to that effect. But is ONE LOVE strongly associated with Marley as a trademark? Yes, the Marley estate has used the phrase, and variations thereof, in connection with a variety of products and services for many years. I’m not sure, however, that the public associates this as a brand identified with goods and services rather than simply the name of a well-known song. I’m also not sure that, if I saw an ad for Raising Cane’s featuring the mark ONE LOVE, I would necessarily think that the Marley estate was involved. Then again, I tend to obsess about these issues more than is normal or healthy.
So, once a mark is established as sufficiently famous to earn protection from Trademark Dilution, the scope of protection tends to be very broad. To my knowledge, there are few cases in which courts have found that (A) a mark is famous and eligible for protection from dilution; (B) the defendant is using the mark in a commercial fashion; and (C) the claim for dilution failed. This is because, following passage of the 2006 TDRA, proof of actual dilution is not required for a claim to succeed; the plaintiff only has to demonstrate that there is a likelihood of dilution.
Instead, Raising Cane’s defense may depend on a defense of laches – from yet another of my scintillating blog posts:
The legal theory of laches may apply here – a defense which requires the defending party to prove that:
- the plaintiff unreasonably delayed in enforcing its rights; and
- the delay caused prejudice to the defendant.
(Citing New Directions for Laches Defence.)
In conclusion, I apologize for getting that song stuck in your head and/or making you feel like you want chicken for lunch. If it’s any consolation, I’m in the same boat.
