Free Speech

Don't Dilute My Coca-Cola with Your Concealed Carry

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Robert Troy Hoff tried to register this trademark, for use on clothing:

Some Georgia company that had a different trademark objected:

No registration for Mr. Conceal Carry, held Administrative Trademark Judge Christopher Larkin of the Trademark Trial & Appeal Board, joined by Judges Linda Kuczma and Thomas Shaw (Coca-Cola Co. v. Hoff); his proposed mark was forbidden by the federal trademark law banning commercial "dilution by blurring" of famous marks:

Dilution by blurring is "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark." Dilution may be likely "regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." The statute's concern is that "the gradual whittling away of distinctiveness will cause the trademark holder to suffer 'death by a thousand cuts.'" …

[A]lthough Opposer often takes public positions on issues of public interest, it "has not to date taken a position on any issues relating to firearms, gun control or the Second Amendment." He expressed Opposer's concern that if it "was incorrectly associated with a position that TCCC had not adopted or with which TCCC did not agree, TCCC would lose control of at least a portion of its goodwill and reputation that the Coca-Cola Script Mark symbolizes, especially with consumers who do not agree with the position."

Opposer's concerns are legitimate. There is a fervent debate in the United States between proponents of gun rights, such as Applicant, and proponents of limitations on those rights. In that debate, Opposer, like Applicant, has the right to take one side or the other, or not to participate at all. We have found above, however, that Applicant's mark will immediately conjure up Opposer's famous Coca-Cola Script Mark, resulting in the association of Opposer with a particular position in the minds of purchasers and observers of Applicant's clothing.

Even if that association is ephemeral for some persons, it compromises Opposer's ability to exercise exclusive control over the goodwill symbolized by the Coca-Cola Script Mark. For members of the public who have been exposed to Applicant's mark, Opposer may appear to be a hypocrite if it later elects to take the opposite position in the gun rights debate or simply remains neutral.

There seems to be some blurring between dilution and the separate trademark theory of confusion in this analysis: Dilution can happen even if everyone understands that Coca-Cola isn't taking any stance on gun control, and is not confused into thinking that Coca-Cola is a hypocrite in the event it eventually opposes gun control. (The opinion notes that, "Because we have found for Opposer on its dilution claim, we need not decide its likelihood of confusion claim.")

The dilution theory is simply that if similar marks are allowed (not just this one but many others in other fields), the Coca-Cola mark will bring to people's minds those other marks, even if they consciously recognize that Coca-Cola hasn't endorsed those marks. Nonetheless, I do think such dilution is likely, for close to the reasons that the panel gave.

NEXT: The Doge Conspiracy

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    1. Coked-up Cockatoo Contests Coke!

  1. Are there any computer font designs that could handle the extended swirl from the capital C to go through the loop of the l several characters further on?

    I am aware of kerning, which allows special spacing based on the immediately following character (the poster child is an f followed by an i, squished together so the dot on the i is the same as the overhand bulge of the top of the f.)

    But something like this would be dynamic, especially if there were two l’s, and you had to swirl through both. We assume there must be a visual gap in the swirl so you cannot simply stamp it atop the l.

    1. Kryat, you have to go to a drawing program like Adobe Illustrator or CorelDraw to get those kind of effects. There are a lot of freeware drawing tools that can do it as well.

      Digital font standards are limited in what they can do, and for the most part are assigned a rectangle in the graphic in which they can draw and not out of it. Unless that rectangle is expanded or distorted. If you go into a word processor and change up the font size of one character in a word you can see how that works.

    2. I have seen fonts do things like that by making an alternate character (like a capital) have the swirl above it so you can place a different character if you need it to extend over it or not

  2. Pepsi gives life. Coke takes life.

  3. Prof. Volokh,

    Wouldn’t Mr. Conceal Carry still be allowed to use the design? As you point out, this is decision is just about the registration. It seems to me that, if the design was put on a t-shirt and sold (just one example), Coke would have a tough row to hoe in terms of winning a lawsuit. Clever theories of sponsorship/endorsement confusion notwithstanding, I have a hard time imagining how this amounts to infringement. And even accepting your conclusion that some dilution is likely here, this strikes me as speech squarely protected by the First Amendment. Pretty sure that defense would be effective for both infringement and dilution claims, but maybe I’m wrong?

    1. No, I think that Coca Cola would likely prevail.
      First of all, injunctive relief is decided by a judge, not a juror.
      Second, First Amendment rights are not unlimited. You don’t have to use a logo that is similar to Coca Cola’s to get your point across. The NRA has been taking the same position for decades without ever coming close to Coca Cola’s logo.
      Third, the confusion as to sponsorship (which is a good claim under the Trademark Act) appears strong to me. Looking at their logo, you cannot help but think of Coca Cola, and that would suggest to some people that Coca Cola is agreeing with or endorsing that message.
      Dilution is a tougher sell in terms of the First Amendment, but the argument would be that Congress has granted a property right to certain trademark owners (famous ones), protected against dilution. The First Amendment does not give you the right to impinge upon someone’s property, any more than it privilege’s you to tresspass on private property to hold a protest.

    2. I should also note that under B&B Hardware v. Hardware Industries, 135 S.Ct. 1293 (2015), Coca Cola would have a strong collateral estoppel argument if it sued in district court.
      https://scholar.google.com/scholar_case?case=8172713504190922779&hl=en&as_sdt=6&as_vis=1&oi=scholarr

  4. Makes me curious about the “Enjoy … Cocaine” t-shirts that have been around since at least the 70s and use a Coca-Cola font or a close approximation. Are those trademarked? If not, could Coca-Cola stop them, or would they be considered fair use?

    1. Or truth in advertising because Coka-Cola used to have cocaine leaf extract in it.

      1. I was amused when Coca-Cola Classic (remember the New Coke kerfluffle in the mid 1980s?) was labeled ¨original formula¨.

    2. I was going to say, there’s a scene in Led Zeppelin’s “The Song Remains the Same” where a roadie is wearing that shirt.

      I suspect it’s an infringement. If it isn’t, it is because it falls into some sort of parody defense- not trademarkable, but not an infringement.

    3. There was a case about that. The Cocaine guy lost.

      Coca-Cola Company v. Gemini Rising, Inc., 346 F.Supp. 1183 (E.D.N.Y. 1972)
      https://scholar.google.com/scholar_case?case=16929560765043525310&hl=en&as_sdt=6&as_vis=1&oi=scholarr
      FWIW, many consider that to have been wrongly decided.

  5. What about the parody exception?

    Larry Flynt’s sex in the outhouse ad included a near-exact duplicate of the typesetting used in a concurrent Campari advertising campaign.

    1. Campari didn’t sue. Falwell did.

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