Traveling Lumberjack Show Sues Wisconsin Lumberjack Show Over Paul Bunyan Trademark

from the timber dept

Wed, Aug 12th 2015 11:30pm — Timothy Geigner

I recently took my annual fishing trip into northern Wisconsin and, on the way, stopped for breakfast at the Paul Bunyan's Cook Shanty in the Dells. I didn't realize at the time that this wonderful establishment that hurled eggs and pancakes at me was embroiled in a strange trademark dispute. See, in addition to being an eatery, Paul Bunyan's also puts on a rather elaborate lumberjack show, complete with log rolling and cutting and all the rest. The problem, apparently, is that there is a traveling lumberjack show based out of Florida called the Paul Bunyan Lumberjack Show, and that company has filed a trademark suit in federal court against the Dells eatery.

The owners of the Paul Bunyan Lumberback Show, based in St. Cloud, Florida, filed a lawsuit this week in federal court in Madison. The plaintiffs say the owners of the Paul Bunyan Cook Shanty in Wisconsin Dells can't use the name of the mythical lumberjack in its show because they have trademarked it.

The Portage Daily Register says both shows include competition by professional lumberjacks in a variety of events, including chopping, sawing and log-rolling. The Dells show is held next to the restaurant while the Florida show travels around the country and included a stop last month in Wisconsin.

To my mind, it would be ridiculous enough for a company in Florida to lay claim to a fictional character that dates back to the early 1900's, not to mention a fictional character whose many origin stories nevertheless are relegated to the locations north of the Mason-Dixon line. It's more ridiculous still that this Florida-based traveling logger show would claim customer confusion with a Wisconsin Dells establishment that's been around since the 1950's. Paul Bunyan, by the way, is in the Public Domain.

Now, the Florida show has been using the name "Paul Bunyan Lumberjack Show since 1988, but only registered it in 2014. The Dells restaurant, on the other hand, has been using the name "Paul Bunyan" for six decades, but only started its lumberjack show three years ago. It will be on a common law claim that the Florida show's trademark suit rests. However, that really shouldn't matter. There is little chance that any real customer confusion could be shown, particularly given the Dells company's long-established history and use of the name.

That this is all over a public domain fictional figure shows how silly trademark has become.

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Filed Under: lumberjack show, lumberjacks, paul bunyon, trademark
Companies: paul bunyan lumberjack show, paul bunyan's cook shanty

11 Comments

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Anonymous Coward, 13 Aug 2015 @ 1:54am

I'm a lumberjack, and I'm okay,
I sue all night and I sue all day
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David, 13 Aug 2015 @ 2:08am

Aaaaaand
Paul Bunyan disease strikes again.

This comic issue might have been from before the trademark registration, though.

And there also is Paul Bunyan Land in Minnesota, including his trademark blue ox.
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Anonymous Coward, 13 Aug 2015 @ 5:55am

Re:
Collect the proceds of my score
I, don't lumberjack any more

I'm a lawyer now, and I'm ok
I sue all night and I sue all day
I reap rewards, I don't deserve
They paid for, these hors d'oeuvres

I'm a lawyer, and I'm ok
I sue all night and I sue all day
I died, and met Peter at the gates
He sent me, to live with Bates
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Anonymous Coward, 13 Aug 2015 @ 8:05am

You're Doing It All Wrong
The television reporting from the local town was terrible. They made it sound like the restaurant would have to change its name. It is unlikely that the Florida company would claim that its lumberjack show is likely to be confused with the Wisconsin company's restaurant. And neither party in this case is claiming a trademark in the phrase "Paul Bunyan" standing alone, any more than TechDirt would claim trademark rights in the word "Tech" (or "Dirt").

A quick check of the PTO's website shows that the Florida company claims "Paul Bunyan Lumberjack Show" in International Class 41 for entertainment services. The Wisconsin company claims "Paul Bunyan's Cook Shanty" in International Class 43 for restaurant services.

So when the Wisconsin company starts offering entertainment services under the name "Paul Bunyan Northwoods Lumberjack Show" with "Northwoods" in a small, practically unnoticeable font, the likelihood of confusion increases substantially and may be actionable.

Why not link to the actual complaint rather than a bad television report?
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Jeff Green (profile), 13 Aug 2015 @ 9:11am

What is a trademark? I had always thought a trademark was a distinctive mark or name used to identify a product or service. To be distinctive it had to be more than purely descriptive.
In the case the alleged mark appears to have strayed into the area of a mere description, in this one particular case. It would be very difficult to see how his eatery could ever run a lumberjack contest without some degree of similarity existing to the Florida based company's shows. BUT THAT IS THEIR FAULT! They chose to put together the stereotypical name for a lumberjack with lumberjack shows. Was it foreseeable that there were places using Paul Bunyon in their name? Of course it was, was it foreseeable that such places could want to run lumberjack shows? Of course it was clearly an idiot at the PTO didn't bother to think. If there were any logic in the world the case would be slung out in the first 3 minutes, so I predict it will drag on for years!
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Sheogorath (profile), 13 Aug 2015 @ 9:54am

The Florida show [only registered the name "Paul Bunyan Lumberjack Show"] in 2014. The Dells restaurant [...] only started its lumberjack show three years ago.
You think the Florida outfit registered simply to sue the restaurant?
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Anonymous Coward, 13 Aug 2015 @ 12:23pm

To be distinctive it had to be more than purely descriptive.

Yes, that is known as “aqcuired distinctiveness”, which is what a merely descriptive term must be shown to have to be protectable as a trademark.
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Coyoty (profile), 13 Aug 2015 @ 6:37pm

The Florida claim is a lot of blue castrated bull.
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Matthew (profile), 14 Aug 2015 @ 6:35am

Dear Sir or Madam,
Dear Sir or Madam,
Let's agree that the travelling show won't play in the Wisconsin Dells and the Dells show won't take their act on the road, and get back to hurling chainsaws, deal?

Solved. Tell the lawyers to fuck off.

But then again, i think the nature of these two shows clearly suggests a manner of resolution that would be much more satisfying for all parties.
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Klaus, 19 Aug 2015 @ 3:39am

Florida
I'm quite astonished that there's a lumberjack outfit based in Florida. I've toured all around there and I don't recall seeing too many trees. Shrubs and swamps, yes. Actual trees, no.

I did read once that more chainsaws were sold in Florida than in the Dakotas (or some state where there really are trees). But I always thought this was a crime thing rather than lumberjacking.
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Coyoty (profile), 19 Aug 2015 @ 5:02pm

Re: Florida
There are not that many trees because of the lumberjacks. They're an invasive species. Someone thought they could transport them from Canada, but with no natural predators in Florida, they got out of hand. Some conservationists thought the aligator wrestlers could control them, but they weren't enough. There's a proposal now to allow them to be hunted for their flannel and beards.
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