How A US Burger Chain Brought 'Ruby Tuesday' Full Circle Through Trademark Bullying
from the the-circle-is-now-complete dept
Circles are so zen. So jedi. So the force. "The circle is now complete," Darth Vader says in A New Hope. Well, it turns out that the universe has a way of pulling this sort of dynamic out of the realm of the mystical and into the far more mundane realm of trademark bullying. You may be aware of the American burger chain Ruby Tuesday. The chain has locations all over the United States and internationally. Notably, the company's website lists no locations in Australia. This is notable because the American chain has for some reason decided to try to bully an Australian rock band, Ruby Tuesdays, into changing its name over trademark concerns.
Ruby Tuesday the restaurant has served Ruby Tuesdays the band with a letter outlining their intent to sue. It reads: “While many artists pay tribute to other artists through imitation, when it comes to imitating famous trademarks, only Ruby Tuesday is entitled to the goodwill of its mark.”
The letter continues: “In fact, the knowing adoption of a mark intending to play off a well-established mark is among the most egregious of trademark violations, warranting courts to apply the harshest of consequences.”
The corporation has demanded that the group change its name, close down its website, destroy all of its merch and pass on all of its profits as compensation.
So, a number of things should be immediately obvious here. First, these two organizations are not remotely in the same marketplace. Burgers and music acts offer no avenue for public confusion as to what the source of the prodct is. Second, for that and a myriad of other reasons, there is no potential for confusion here. The entire point of trademark law is to keep consumers informed as to the source and affiliations of a product. That is simply not in issue here. All of that is particularly so when you consider that Ruby Tuesday does not have any storefront locations in the entire country in which the band exists. We can just add here for context that this is a penniless hobby band that has very little notoriety, even in Australia.
But back to the concept of this representing a circle. Our younger readers may not realize this, but the Ruby Tuesday restaurant chain has an ironic source for its name.
The restaurant's name was derived from The Rolling Stones song, "Ruby Tuesday", which was popular during the time of the first restaurant's inception. The name was suggested to founder Sandy Beall by Bob Hope.
"The circle is now complete." Yes, the restaurant yoinked the title of one of the most popular songs from one of the most popular rock bands ever for its name in the 1960s and then turned around and attempted to bully a little-known rock band out of that same name in the present. I'll give Ruby Tuesday credit here for the pure audacious irony of its tone-deaf attempt at legal asshatery.
Zero credit is awarded, however, for having anything resembling a valid trademark claim.
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Filed Under: australia, hamburgers, music, restaurants, ruby tuesday, trademark, us
Companies: ruby tuesday
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Hypocrisy AND legal thuggery, nice combo
The corporation has demanded that the group change its name, close down its website, destroy all of its merch and pass on all of its profits as compensation.
Translation: 'Burn your band to the ground, and then give us any money you might have gotten to ensure that it stays ash.'
In their shoes I think I'd make it clear that I would be willing to spend the band into the ground before I'd give them so much as a cent. Some 'look at what these hypocrites are doing' advertising might be warranted too, to ensure that Ruby Tuesdays doesn't come out of this without their own black-eye.
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Now that Barbra Streisand has become their publicist,
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Turnabout
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Re:
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A proud tradition
Its a rare example if the music industry showing common sense when faced with a compliment.
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Re: A proud tradition
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Re: Re: A proud tradition
Well, that's the problem, isn't it? Confronted with a rock band named "Ruby Tuesdays", people will immediately think of the Rolling Stones. Not some stupid obscure burger joint wherever.
So exactly because it is a tribute does that burger chain want to shut down any musical reference to the Stones' "Ruby Tuesday".
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Re: Re: Re: A proud tradition
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out_of_the_blue's heroes, ladies and gentlemen!
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Asshattery?
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Re: Asshattery?
Stupid lawsuits are deserving of mockery, at times using language that is somewhat short of 'polite', and using that sort of language can help deal with the headache from overwhelming legal stupidity.
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Re: Asshattery?
I just find it a little difficult to take anything from an author that uses the term “asshattery” seriously.
Why?
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Re: Asshattery?
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Re: Asshattery?
Do you really take yourself that seriously?
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Think big!
Just think what kind of license fees they could collect my suing calendar makers for any reference to "Tuesday". Or, to stay within the music business, concert agents scheduling concerts on "Tuesday" (admittedly not the most frequent occurence).
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Self-fulfilling prophesy
The lyrics actually say
and now we have the answer.
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Re: Self-fulfilling prophesy
XD
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So that's what happened...
Went from burgers to trademark bullies... That's progress.
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It's not about the market space
The real issue is that one company (in this case, the restaurant) doesn't want another company (the band) to use a similar name in case the public thinks both are somehow related, as in the band is authorized and endorsed by the restaurant. So the company lawyers use the only tool available to them: file a cease & desist or trademark notice.
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Re: It's not about the market space
I really wish discussions of these kinds of issues would do away with the idea of companies not being in the same market space.
Trademark law specifically requires that marks only apply to specific markets, so it is entirely appropriate.
The real issue is that one company (in this case, the restaurant) doesn't want another company (the band) to use a similar name in case the public thinks both are somehow related
And part of the legal analysis for that is... whether or not they're in the same market.
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Re: Re: It's not about the market space
The argument is that being in the same market is not a necessary requirement for the public to consider two things with similar names to be related, and therefore the legal analysis should not treat lack of that element as definitively resolving the question.
On the one hand, I can see how the lack of a same-market requirement would expand the scope of trademark to the point where it would wreak havoc in a number of ways.
On the other hand, speaking as a member of the public in question, I do see how the public may indeed not take in-the-same-market into account in considering whether to think of two things as related - because I have sometimes seen two names in unrelated markets where my initial default assumption would have been that it was either one company getting into two different businesses, or one entity endorsing another by lending the use of its name. (The first example that comes to mind is the one from the article on this site, some time back, in which one side of the dispute involved "Land O' Lakes" butter.)
This is one of those subjects where I'm honestly not sure what the perfect way to resolve the problem is, nor indeed whether such a way even exists.
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Re: Re: Re: It's not about the market space
Make a trademark include distinctive features beyond the word used, like the golden arches of McDonalds. The style of presentation of the same or similar names can be distinctive, including background logos etc.
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Re: Re: Re: It's not about the market space
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So the next obvious question....
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It's by country and field of endeavour, first-come, first-served
Yes, and the "Holiday Inn" chain was named after a Bing Crosby flick. "I'm dreaming of a white Christmas..."
Nonetheless, if there already was a "Holiday inn by the falls" in Niagara ON before the chain came to Canada, the US chain could set up shop in Niagara NY or St. Catherines ON but no closer... until at least a half-century later, when they finally managed to recruit "Holiday inn by the falls" to the US "Holiday Inn" chain. A similar issue (name already in use by someone else) forced Booger King onto the "Hungry Jack's" branding in Australia for years (BK was originally owned by Pillsbury and the dough boy already held an AU trademark for a "hungry jack" flapjack/pancake mix so they re-used that trademarked name).
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AND??
The Rolling Stones - Ruby Tuesday (Official Lyric Video)
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Andrei Mincov
Founder and CEO of Trademark Factory® / https://trademarkfactory.com, the only firm in the world that offers trademarking services with a predictable, guaranteed result, for a predictable, guaranteed budget. We can help you register your trademarks with a free comprehensive trademark search, for a single all-inclusive flat fee, with a 100% money-back guarantee.
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