Two new trademark infringement suits were recently filed, with Muhammad Ali squaring off against the manufacturer of an e-reader and Wendy’s facing a suit from a seafood chain.
Muhammad Ali filed a federal suit against Kobo Inc., the Canada-based manufacturer of an electronic reading device.
Kobo used the boxer’s famous quote, “float like a butterfly, sting like a bee” in a full-page advertisement in a major newspaper, which, according to the suit, falsely implied Ali’s endorsement, infringed upon his trademarks, and violated his right to publicity. The ad featured the wording, credited to Ali, as well as reviews of the e-reader from tech publications, like “A real contender – Computerworld” and “The look of a winner – Gizmodo.”
“Each statement is a reinforcement of the persona of Muhammad Ali,” according to the complaint.
Muhammad Ali Enterprises, the holder of Ali’s intellectual property rights, has two federal trademarks for the phrase, the complaint notes, that cover a variety of products like journals, t-shirts, hats, toys, and games. The marks have been licensed to “blue chip” companies, like Gatorade and Epson, to include in their advertising.
Calling Ali “one of the most famous and iconic personalities in the United States, and in the world,” the suit seeks an injunction, the destruction of any marketing materials used by Kobo, and compensatory and punitive damages.
In a second suit, Pincher’s Crab Shack, a seafood chain, filed suit against fast food company Wendy’s, alleging that the company misappropriated the seafood chain’s tagline “You Can’t Fake Fresh.”
Florida-based Pincher’s has used its “fresh” logo since 2004. Now trademarked, it appears in signage at each restaurant location, on the company’s Web site and menus, and in radio and television ads.
Wendy’s recently began using the phrase in its ads where a Wendy’s employee holds up a sign reading “You can’t fake fresh.” In addition, the company began using the phrase “You can’t fake real” on its Web site, a tagline that Pincher’s argues is “fruit of the poisonous tree” in that it is the progeny of the first infringing use of its mark.
The parties market to “exactly the same group of consumers,” the suit argues, and the 15-count complaint alleges trademark infringement, unfair competition, and violation of Florida’s business laws.
To read the complaint in Muhammad Ali Enterprises v. Kobo, Inc., click here.
To read the complaint in Phelan Holdings, Inc. v. Wendy’s International, click here.
Why it matters: In these cases, the plaintiffs will have to establish, respectively, that consumers believed that Muhammad Ali endorsed Kobo’s e-reader and were confused about Wendy’s use of the same phrase used by Pincher’s Crab Shack.