Archives for January 2018 | Intellectual property and business law blog

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Steve O'Donnell, Ph.D. Registered Patent Attorney

Bubble Guppies, bubble bubble guppies

Bubble bubble bubble
Guppy guppy guppies



That’s about as far as I ever got into an episode of Bubble Guppies before my brain shut down for self-preservation. The kids liked it though. I’m so glad those days are over.

Bubble Guppies is a show on Nick Jr. About guppies...I guess, who have adventures, or sing, or teach...I don’t know, ask a toddler. Anyway...

Back in the 90s, Debbie and Dean Rohn started a children’s clothing company and registered GUPPIE (and a logo) for their business. They sold some clothes, not a huge amount, but were in a few stores. Then, after the 90s, just as the Smash Mouth’s “Rockstar” was fading from memory, the Guppie branded clothing line declined. For a few years there were very limited sales and no stores were carrying the clothes. Eventually the Rohns’ launched a website and started to get some more sales. I know that sounds like they were pretty passive, but they really weren’t. It seems they put a lot of effort into promoting their line and while taking pro-kid and anti-bullying stances, and offering parenting/behavior ideas.

Then, in 2011 Nickelodeon launched the show Bubble Guppies and registered the name in the market of education and entertainment. Shortly after that they stated selling Bubble Guppies stuff, including kids clothing.

The Rohns didn’t much care for that, as you might imagine. They reached out and tried to open licensing negotiations, and when that didn’t go anywhere, they sued for trademark infringement.

Most people, like the Rohns, would think they’d win. Right? They registered the trademark first and not a much large company was steamrolling them. There’s a Burger King case kinda like this on the books. Long story, super short: Burger King registers their name, but there’s already an unaffiliated Burger King outside Chicago. The earlier restaurant has rights to the name around where they’ve been operating and the national Burger King can’t open a place by them. The crux of the Burger King case is that the earlier place already was an established business known in their area, but not nationally, so the national chain could only get the rights to the rest of the country. They still can’t open a restaurant near the original restaurant.

So, based on Burger King you might think that the Rohns would have the exclusive right to GUPPIES on clothing at least where they were in stores, if not nationally due to their federal registration. But, like I said, the crux of Burger King is that the original restaurant was “established and known” before the national chain came in.

One’s use of a mark is the core of trademark law. The registration is great, and gives the owner superior rights, but it’s meaningless is you’re not using the mark.

One or two times a year there will be some phrase that suddenly becomes popular: “three-peat,” “beast mode,” “shock and awe,” “notorious RBG,” “she persisted,” are some that come to mind. Watch Facebook for a couple weeks and you’ll see some similar phrase or slogan suddenly peak. Almost without fail, someone will call me to trademark the phrase for them.

The problem with doing that from a legal standpoint is that you can’t get a federal registration or any trademark rights until you’re actually using the trademark, and many of the callers think they can quickly stake their claim and then sell their rights when someone else wants to use the phrase. Nope. That won’t work. Plan B is that they’ll quick through the phrase on a t-shirt to show they’re using it and then start suing everyone on Facebook for using the phrase or sharing memes incorporating the phrase. Nope. Still won’t work. For one thing, putting a phrase on a t-shirt isn’t really using it as a trademark--that is, something to identify a brand--it’s using the phrase as a decoration for a Hanes® or other brand t-shirt. Plus, even if you did get a trademark for using a certain phrase on t-shirts, that doesn’t mean you can just sue everyone else who uses the trademark--your rights are limited to the markets in which you’re using the mark. If the owners of the Chicago-area Burger King decided instead to use the name for a business selling hockey pucks then the restaurant chain wouldn’t have had any problem because few people will confuse a hamburger for a hockey puck. At least, they wouldn’t make the same mistake twice.

So, it may not be a surprise then, that the Rohns didn’t win. They simply weren’t known by the time Nickelodeon started selling Bubble Guppy stuff. There wasn’t any liklihood of confusion because the Rohn’s GUPPIE mark wasn’t known. No one buying clothes for little kid would see a Bubble Guppies t-shirt and buy it thinking they were really buying a GUPPIE brand item--because precious few people knew of the Rohn’s clothing line at the time.

They fought pretty hard though, they took this through the District Court and through an appeal. That couldn’t have been cheap, unless their attorneys took the case on contingency. Really, I’m a little surprised this case went as far as it did. Nickelodeon almost certainly could have settled this for less than they spent on lawyers.

Anyway, if you’re in the market for some clothes, and kinda want to stick it to Nick Jr., check out the Rohns’ website.

District Court opinion.
CA6 opinion.