Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc.
114 U.S.P.Q. 2d (BNA) 1470, 783 F.3d 527, 2015 U.S. App. LEXIS 5693 (2015)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A word mark or design mark derived from a well-known public tradition is merely descriptive and not inherently distinctive, and thus can only be protected under trademark law if it has acquired secondary meaning, meaning the public primarily associates the mark with a single source rather than the tradition itself.
Facts:
- For many years, New Orleans Mardi Gras parade-goers have had a tradition of twisting discarded plastic beads into small dog-shaped figures, commonly known as 'bead dogs.'
- Haydel Enterprises ('Haydel'), a New Orleans bakery, commissioned an artist in 2008 to design a mascot based on this tradition, which it named the 'Mardi Gras Bead Dog.'
- In 2009, Haydel successfully registered 'MARDI GRAS BEAD DOG' as a word mark and its specific stylized bead dog image as a design mark for use on king cakes, jewelry, and clothing.
- In May 2012, Raquel Duarte formed Nola Spice Designs to sell jewelry, including necklaces and earrings featuring bead dog trinkets she made by hand-twisting beads and wire, similar to the traditional craft method.
- Haydel's jewelry is made of sterling silver, while Duarte's is made from beads and wire.
- Haydel acknowledges that its mascot 'brings to mind the traditional bead dog' made from Mardi Gras beads.
- In August 2012, after learning of Duarte's products, Haydel sent Nola Spice Designs a letter demanding it cease all use and sale of the bead dog design.
Procedural Posture:
- Nola Spice Designs filed a complaint against Haydel Enterprises in the U.S. District Court, seeking a declaratory judgment that its products did not infringe Haydel's trademarks and requesting the cancellation of those trademarks.
- Haydel asserted counterclaims against Nola Spice and filed a third-party complaint against its owner, Raquel Duarte, for trademark infringement, unfair competition, trademark dilution, and copyright infringement.
- Both parties filed cross-motions for summary judgment.
- The district court granted summary judgment in favor of Nola Spice, declaring it was not infringing, canceling Haydel's trademarks as unprotectable, and dismissing all of Haydel's counterclaims.
- Haydel Enterprises, as appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Fifth Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Are a word mark ('MARDI GRAS BEAD DOG') and a corresponding design mark, both derived from a well-known public tradition, legally protectable trademarks against a competitor selling products inspired by the same tradition?
Opinions:
Majority - Judge Higginson
No. A word mark and design mark derived from a well-known public tradition are not legally protectable trademarks without a showing of secondary meaning. The court determined that both Haydel's word mark and design mark were descriptive and lacked the secondary meaning required for protection. For the word mark 'MARDI GRAS BEAD DOG,' the court applied the Abercrombie spectrum and found the term descriptive because it conveys information about a characteristic of Haydel's Mardi Gras-themed products without requiring imagination. Competitors would also likely need to use the term to describe similar products. For the design mark, the court applied the Seabrook Foods test and found it was not inherently distinctive because it is a 'mere refinement' of a commonly known form of ornamentation—the traditional Mardi Gras bead dog—rather than a unique or unexpected design in the market. Finally, the court concluded Haydel failed to raise a genuine issue of fact regarding secondary meaning, as its evidence of use, sales, and advertising (including the 'Paws on Parade' exhibit) was insufficient to prove that the public associated the bead dog primarily with Haydel as a source. The court also affirmed summary judgment on the copyright claim, finding no substantial similarity between the protectable elements of Haydel’s design and Nola Spice's products after filtering out unprotectable ideas like anatomical features and the general concept of a bead dog.
Analysis:
This case establishes a significant precedent for intellectual property rights concerning cultural traditions and public domain concepts. It reinforces the principle that trademark law cannot be used to monopolize common cultural symbols or phrases that are descriptive of a tradition. The decision clarifies that merely being the first to register a mark based on a public tradition does not automatically grant exclusive rights; a party must make an exceptionally strong showing of secondary meaning to privatize such a symbol. This ruling protects small artisans and competitors who wish to participate in and draw inspiration from shared cultural practices, ensuring that descriptive terms and common designs remain available for public use.
