LLTB, LLC (“LLTB”) owns incontestable trademark registrations for the phrase LETTUCE TURNIP THE BEET for clothing. The company successfully sells its clothing bearing the phrase. Celebrities such as Rachel Ray own shirts with the mark.

Redbubble, Inc. (“Redbubble”) operates an online marketplace where independent artists can upload and sell their designs on products such as tote bags, phone cases, apparel, etc. Products featuring the phrase “Lettuce Turnip the Beet” have been sold on the Redbubble website. LTTB brought suit in the Northern District of California for trademark infringement.

District Court Decision Against LETTUCE TURNIP THE BEET

The District Court found for Redbubble. They stated that a trademark holder cannot prevent others from using a phrase or pun in contexts that do not imply a source. Here, the District Court looked at the mark under the aesthetic functionality doctrine. The District Court found that there was no evidence presented that consumers but LTTB’s goods based on the source as opposed to the aesthetic function of the phrase. Accordingly, the District Court granted summary judgment for Redbubble. LTTB appealed to the Court of Appeals for the Ninth Circuit

Court of Appeals Decision Against LETTUCE TURNIP THE BEET

The Court of Appeals agreed with the District Court and affirmed summary judgment for Redbubble. As a first step, they inquired whether the alleged significant non-trademark function was essential to the use or purpose of the article or affects its cost or quality. They found the T-shirts, tote bags, and other products would still function without the mark. As a second step, they also asked whether protection of the feature as a trademark would impose a significant non-reputation-related competitive disadvantage.

The Appeals Court found the evidence presented by LTTB showed the popularity of its goods. However, the evidence failed to show that consumers buy the goods because they identify LTTB as the source of the goods as opposed to merely finding the pun aesthetically pleasing. Accordingly, they found the marks serve an aesthetic purpose wholly independent of any source-identifying function. Thus, the marks are aesthetically functional. The Appeals Court noted the “allegedly infringing activity does not deceive or mislead customers about the source of the goods but copies the designs themselves.”

Importantly, neither court ruled that LTTB’s marks were invalid. The ruling limited to LTTB could not prevent others from using the phrase in an ornamental sense. If a company used the phrase as a source identifier, LTTB would have a stronger case for infringement.

Takeaway

Regarding the mark functioning as a trademark, the threshold inquiry is whether purchasers or potential purchasers perceive the goods as a source identifier. This case exemplifies ornamental or aesthetically functional marks are unlikely to function as a source identifier. This is true particularly if the alleged infringing party uses the phrase in an ornamental sense. Consumers purchase the goods for the message conveyed, not as a source identifier.

FAQs

Can phrases be considered trademarks?

Yes, phrases can be considered trademarks as long as they are used as a source identifier.

Michele Lawson

Michele Lawson is a U.S. Registered Patent Attorney.