The Naked Cowboy Has A Trademark And A Lawyer... And He's Not Afraid To Use Either

from the our-wonderful-society dept

Fri, Feb 15th 2008 4:01pm — Mike Masnick

Eric writes in to let us know of a rather odd trademark infringement lawsuit going down in New York. It appears that "The Naked Cowboy," a Times Square institution (he's basically a guy who plays a guitar in Times Square in a cowboy hat and underwear) not only has a trademark on the concept, but he's suing the Mars Company for a video billboard it put up in Times Square (of course) showing animated M&Ms prancing around in cowboy hats and underwear in a virtual Times Square. As the article above reports, the guy may actually have a case of trademark infringement under current laws, though $6 million seems a bit excessive no matter how sure the cowboy (real name: Robert Burck) is of his chances. The real question, though, is whether or not this makes any real sense. The purpose of trademark law is to prevent consumer confusion. It's to prevent Bob's Cola from labeling its bottles as Coca Cola and getting people to buy something other than what they think they're buying. Is that the case here? Will M&Ms buyers be confused? I doubt it, even when we apply the famous "moron in a hurry" test. It's certainly difficult to see how the ad takes anything away from Burck himself -- though, I imagine the lawsuit should only serve to draw more attention to him, which is likely the point, whether or not he scores $6 million out of Mars.

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Filed Under: naked cowboy, trademarks
Companies: mars

21 Comments

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CatBandit, 15 Feb 2008 @ 5:07pm

Naked cowboy
Hmmm. Strumming a guitar in Times Square - in skivvys. I'm inclined to say *Leave the nut alone*, except it's the nut who is doing the bothering (of Mars candy Co.). One more reminder of my semester in Sociology when the professor pointed out that a few rats in a closed maze were no threat to anyone, but many rats in that same maze becomes a threat to all.
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Alfred E. Neuman, 15 Feb 2008 @ 5:15pm

And in other news ...
running around NYC in your underwear is perfectly legal.

Oh, and does he wear "fruit of the loom" ??????
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ChurchHatesTucker (profile), 15 Feb 2008 @ 5:16pm

I don't know about this one. Could it be understood as an implied endorsement?
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Anonymous Coward, 15 Feb 2008 @ 5:49pm

Yeah I'd have to say that the "confusion" regarding this trademark would come from people thinking he's endorsing M&Ms or something. Plus the fact that they played the damn ad right where he does his thing is kinda taunting him, to his face.

I don't know what law that comes under, though.
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Shag, 15 Feb 2008 @ 7:42pm

rightness
Its the guys shtick after all.

He even shows up in Spiderman.

So, that is his shtick, gimmick. Its hard to call it a copy-right, although if they used it without permission, they are on the hook.

The bigger the company the bigger the cash.
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Rekrul, 15 Feb 2008 @ 10:54pm

Maybe someone should sure him for false advertising or fraud (whichever is more appropriate) since the "naked" cowboy isn't naked.
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- MooCow, 16 Feb 2008 @ 8:53am
  
  Re:
  Agreed! Maybe Mars can use it as a counter-suit or something.
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Adrian in Dallas, 16 Feb 2008 @ 3:58am

Naked Cowboy
Clearly most of those posting here have never been to Times Square and happened to run into "The Naked Cowboy." He's a hoot and earns his money by simply being who and what he is --with a guitar! It's a brilliant bit of marketing and he's been in Times Square for well over a decade, doing his thing. So who in the hell does MM MARS think they are to steal his act and then shove it in his copyrighted face in the exact same place he plies his trade? Have none of you a sense of fairness, let alone an understanding of copyright laws? (Anybody remember when MM Mars tried to sue the pants off (as it were) the makers of Reeses's Pieces for copyright infringment? Then Mars bought Reeses and all was well. Perhaps they should hire "The Naked Cowboy" as their spokesperson...?
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Adrian in Dallas, 16 Feb 2008 @ 3:58am

Naked Cowboy
Clearly most of those posting here have never been to Times Square and happened to run into "The Naked Cowboy." He's a hoot and earns his money by simply being who and what he is --with a guitar! It's a brilliant bit of marketing and he's been in Times Square for well over a decade, doing his thing. So who in the hell does MM MARS think they are to steal his act and then shove it in his copyrighted face in the exact same place he plies his trade? Have none of you a sense of fairness, let alone an understanding of copyright laws? (Anybody remember when MM Mars tried to sue the pants off (as it were) the makers of Reeses's Pieces for copyright infringment? Then Mars bought Reeses and all was well. Perhaps they should hire "The Naked Cowboy" as their spokesperson...?
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Adrian in Dallas, 16 Feb 2008 @ 3:59am

Naked Cowboy
Clearly most of those posting here have never been to Times Square and happened to run into "The Naked Cowboy." He's a hoot and earns his money by simply being who and what he is --with a guitar! It's a brilliant bit of marketing and he's been in Times Square for well over a decade, doing his thing. So who in the hell does MM MARS think they are to steal his act and then shove it in his copyrighted face in the exact same place he plies his trade? Have none of you a sense of fairness, let alone an understanding of copyright laws? (Anybody remember when MM Mars tried to sue the pants off (as it were) the makers of Reeses's Pieces for copyright infringment? Then Mars bought Reeses and all was well. Perhaps they should hire "The Naked Cowboy" as their spokesperson...?
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Kari Walling is Evil, 16 Feb 2008 @ 6:54am

Could the last poster please post a 4th time? I missed it the first three times
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Grady, 16 Feb 2008 @ 12:33pm

I would say he doesn't have a case, except, as some have pointed out, it's at the same location. There will be confusion as to whether or not he is endorsing the product. If, say, the ad was on TV everywhere, or at another location, then, no, he wouldn't have a case. But I do agree that $6 million is a bit...excessive.
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Pete, 16 Feb 2008 @ 12:41pm

I don't understand how the M&M commercial hurt him, it is not like it drove his customers to another street corner where they would then give money to some dancing M&M's, shoot even when people go into a store and buy M&M's it is not taking money away from him so where is there any damage, or loss of income?
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Brian, 16 Feb 2008 @ 5:02pm

I was running around in my underwear before him. With a guitar and just about everything else too. I hope he wins, then it will be my turn to go after him.
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Tamara Denshire, 16 Feb 2008 @ 11:34pm

He should be sued himself
He claims Mars ripped him off because he's been doing it for over a decade. But he didn't come up with it did he? No. A guy in a cowboy hat with a guitar placed the same was as his was used in advertising in Australia 25 years ago for Milo (A Nestle brand). Not sure if Nestle used the same ads overseas.

I don't see how he can claim that Mars infringed his trademark since he wasn't the first person to do it.
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- Willton, 18 Feb 2008 @ 12:47pm
  
  Re: He should be sued himself
  I don't see how he can claim that Mars infringed his trademark since he wasn't the first person to do it.
  
  Because that's not how trademark law works. If Burck and some other competitor were both using the Naked Cowboy mark, then the one who used it first gets priority over the other. But one can only get trademark protection for a mark if he uses the mark, and he can only get protection where he uses the mark.
  
  So while Nestle may have come up with the mark first in Australia, Nestle has no protection over the mark if Nestle does not use the mark anymore. And if Nestle does still use the mark, it clearly does not use the mark in the United States. And if Nestle were to try to use the Naked Cowboy mark in the United States, Nestle would be infringing on Burck's use of the mark because Burck has priority over Nestle in the United States.
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captain flummox, 17 Feb 2008 @ 1:28pm

I was all set to agree with the implied endorsemen
...and then I read Tamara's comment. So maybe he sues and wins against Mars, then Nestle sues him. That sounds about silly enough.
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pop, 17 Feb 2008 @ 6:06pm

this guy is a big homo nobody buys this cowboy shit
cowboys are homos he is in times square where the all the citys pros homos and whores are times square is a pig hole
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pop, 17 Feb 2008 @ 6:54pm

this bum has no trademark anyone can dress like him anyone can dress like him and stand right next to him an do the same thing he does he does not own the street or the look
people dress like elvis all over the world anyone in public
can be imitated there is no copyright on any looks mars should tell him to go top hell his lawyer is looking to make a name for himself this bum should go out and get a real job
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YDLAFAMS, 17 May 2008 @ 10:13am

yeeeeeeeeHAW
Finally someone is about to get over on big business...I can't believe how irresponsible the Mars Company was to not research any trademarks/licensing in regards to this guy. The biggest hippy is more savvy than you know.
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?????, 8 Jan 2009 @ 12:47pm

i have a racist video
guess who is in it..
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