LTTB, LLC v. Redbubble, Inc.
385 F. Supp. 3d 916 (2019)
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Rule of Law:
A registered trademark, even if 'incontestable,' cannot preclude others from using a phrase as a purely decorative or ornamental feature on products if such use does not imply source and there is no likelihood of consumer confusion as to the product's origin or sponsorship.
Facts:
- Elektra Printz Gorski, a designer and artist, graduated from the Fashion Institute of Technology in 2007 and gained recognition for her design work.
- In 2011, Gorski created the phrase 'LETTUCE TURNIP THE BEET' and began using it as both a source identifier and a graphic design element on apparel and products.
- LTTB, LLC, founded by Gorski, owns four United States federal trademark registrations for the mark 'LETTUCE TURNIP THE BEET,' with two registrations having become 'incontestable' due to continuous use.
- LTTB obtained trademark registrations for 'LETTUCE TURNIP THE BEET' only after submitting specimens showing the phrase on product labels or 'hang tags,' following an initial rejection by the PTO when the phrase was merely emblazoned across the products.
- Redbubble, Inc. operates a global online marketplace where independent artists upload and sell their creative designs on various products, including some that feature the phrase 'Lettuce Turnip the Beet' or similar phrases.
- LTTB's business experienced significant growth, which it attributes to public fascination with its 'LETTUCE TURNIP THE BEET' trademark and the quality of its goods.
Procedural Posture:
- LTTB, LLC filed an action against Redbubble, Inc. in the United States District Court for the Northern District of California.
- LTTB, LLC filed a motion for summary judgment.
- Redbubble, Inc. filed a motion for summary judgment.
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Issue:
Does a registered trademark for a pun, when displayed as a purely decorative or ornamental feature on products like apparel, preclude others from using the pun on similar products without demonstrating a likelihood of source confusion?
Opinions:
Majority - Richard Seeborg
No, a registered trademark for a pun, when displayed as a purely decorative or ornamental feature on products like apparel, does not preclude others from using the pun on similar products without demonstrating a likelihood of source confusion. The court clarified that trademark law's primary function is to identify the source of goods, not to grant exclusive rights to an aesthetically functional or ornamental element. The PTO's initial rejection of LTTB's application for the mark when it was merely emblazoned across products, and subsequent approval only when it appeared on labels, indicated that such use was not source-identifying. Citing International Order of Job's Daughters v. Lindeburg & Co., the court emphasized that consumers often purchase items displaying names or emblems for their intrinsic utility or aesthetic appeal (e.g., expressing allegiance) rather than as indicators of source. LTTB presented no evidence that purchasers of allegedly infringing items inferred LTTB's sponsorship or endorsement. The 'incontestability' of some of LTTB's marks does not alter this, as statutory exceptions exist for functional marks, including those that are aesthetically functional, and the court did not find that the mark was invalid per se, but rather that its use in a purely ornamental fashion could not give rise to an infringement claim without a showing of source confusion.
Analysis:
This decision significantly clarifies the boundaries of trademark protection for phrases that possess inherent aesthetic or linguistic appeal, particularly when applied to consumer goods like apparel. It reinforces that a trademark primarily serves as a source identifier, and its protection does not extend to preventing others from using a phrase in a purely decorative or ornamental manner if consumers do not associate such use with a specific source. The case highlights the importance of how a mark is actually used in commerce, distinguishing between brand identification and aesthetic functionality. This ruling will likely impact future cases involving popular phrases, memes, or puns, requiring trademark holders to demonstrate actual or likely consumer confusion regarding source, rather than merely asserting ownership over the phrase itself when used decoratively.
