How A US Burger Chain Brought 'Ruby Tuesday' Full Circle Through Trademark Bullying

from the the-circle-is-now-complete dept

Thu, Jul 12th 2018 7:46pm — Timothy Geigner

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

39 Comments

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That One Guy (profile), 12 Jul 2018 @ 6:16pm

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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Anonymous Coward, 12 Jul 2018 @ 7:58pm

Now that Barbra Streisand has become their publicist,
the Oz rock band might just get the exposure they are looking for. Kudos to the restaurant chain for arranging her to manage the band's publicity, out of the goodness of their hearts and all.
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Gary (profile), 12 Jul 2018 @ 8:13pm

Turnabout
Kinda reminds me of a rodent based company that lifted all their stories from the public domain. Except they had the audacity to "lobby" for infinite extensions to support their bullying. :)
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Anonymous Coward, 12 Jul 2018 @ 8:19pm

It's time for The Stones to send their own C&D letter to the greasy spoon.
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Pixelation, 12 Jul 2018 @ 8:29pm

Well... good bye Ruby Tuesday's.
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mhajicek (profile), 12 Jul 2018 @ 9:03pm

Wondering if the band would be able to prevent the restaurant from ever opening a location in Australia, as they had the name first in that jurisdiction.
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Junkyardmagic, 12 Jul 2018 @ 11:29pm

A proud tradition
Rock music has a great tradition of bands naming themselves from songs - and not getting bullied by the song's originator. Death Cab for Cutie were named after a Bonzo Dog Bang song and there are loads of other examples. If the stones had behaved like the burger chain they would have face a copyright suit before their first burger was flipped.
Its a rare example if the music industry showing common sense when faced with a compliment.
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Anonymous Coward, 13 Jul 2018 @ 12:02am

Because why come up with a trademark to enforce, when you can (using terms that the RIAA uses) steal somebody else's trademark, escape punishment for the obvious reference, and bully somebody else over it instead?

out_of_the_blue's heroes, ladies and gentlemen!
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Anonymous Coward, 13 Jul 2018 @ 12:53am

Asshattery?
I just find it a little difficult to take anything from an author that uses the term “asshattery” seriously.
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That One Guy (profile), 13 Jul 2018 @ 12:57am

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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Mike Masnick (profile), 13 Jul 2018 @ 12:58am

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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David, 13 Jul 2018 @ 1:05am

Think big!
Having successfully trademarked "Ruby Tuesday", I think it's aiming low to sue a band calling themselves the "Ruby Tuesdays".

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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David, 13 Jul 2018 @ 1:14am

Self-fulfilling prophesy
The lyrics actually say

Goodbye, Ruby Tuesday

Who could hang a name on you?

and now we have the answer.
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PaulT (profile), 13 Jul 2018 @ 2:22am

Re: Asshattery?
That's fine. I can't think of anyone less relevant than someone who whines about which word an author uses in an article, lacking anything to question in its substance.
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PaulT (profile), 13 Jul 2018 @ 2:24am

Re: A proud tradition
There's an excellent Nirvana cover band who tour often where I live in Spain called The Buzz Lovers, clearly named after one of the band's songs. I can't think of anything more of a tribute to Cobain's memory than how a group of people half a world away have worked hard to keep the experience so accurately alive for a generation who could not have experienced the original band. I couldn't think of anything more of an insult than trying to shut those guys down because they used one of his song titles.
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Anonymous Coward, 13 Jul 2018 @ 3:06am

Re: Self-fulfilling prophesy
Beat me to it
XD
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David, 13 Jul 2018 @ 3:08am

Re: Re: A proud tradition

I can't think of anything more of a tribute to Cobain's memory

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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Bruce C., 13 Jul 2018 @ 4:50am

Re:
If the restaurant chain did use the name without a licensing agreement with the Rolling Stones, I sure hope Mick Jagger & co decide to complicate the restaurant's life with a copyright infringement suit.
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cpt kangarooski, 13 Jul 2018 @ 5:24am

Re: Re:
Unlikely. Song titles aren’t protected. Trademark doesn’t apply to mere titles of works, copyright doesn’t apply to words or short phrases.
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JoeCool (profile), 13 Jul 2018 @ 7:31am

Re: Re: Re:
But now they can sue the restaurant for having the same 'feel' as the song. Thank you, incredibly stupid judges!
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Anonymous Coward, 13 Jul 2018 @ 8:01am

So that's what happened...
I always wondered what happened to Ruby Tuesdays. I grew up in their hometown, and overnight 2ish years ago, all of their shops in the area closed.
Went from burgers to trademark bullies... That's progress.
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Anonymous Coward, 13 Jul 2018 @ 8:43am

Re: Asshattery?
How about "douchebaggery" or "dumbfuckery"? Both would have been accurate substitutes in this instance.

Do you really take yourself that seriously?
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John85851 (profile), 13 Jul 2018 @ 10:16am

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.
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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Ryunosuke (profile), 13 Jul 2018 @ 10:22am

So the next obvious question....
When is The Rolling Stones going to sue Ruby Tuesday's for trademark infringement and past royalties/profits?
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Flakbait (profile), 13 Jul 2018 @ 10:23am

Re: Re: Asshattery?
Because he prefers proper words like 'tomfoolery', 'shenanigans', 'monkeyshines', and 'high jinks.' Use of vulgarity-based words make him go all jackanapes.
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carlb, 13 Jul 2018 @ 10:39am

It's by country and field of endeavour, first-come, first-served
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.

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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Anonymous Coward, 13 Jul 2018 @ 1:01pm

Re: Re: Re: A proud tradition
Indeed... I'm not from Australia, but I had heard of the Ruby Tuesdays because of something one of the members posted online. I've never heard of the US burger chain though. Maybe this was a last gasp attempt at publicity?
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ECA (profile), 13 Jul 2018 @ 1:03pm

AND??
https://www.youtube.com/watch?v=ADtnUC_ctNk

The Rolling Stones - Ruby Tuesday (Official Lyric Video)
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Anonymous Coward, 13 Jul 2018 @ 5:14pm

Re:
Since the rule concerning different business in different industries is strictly enforced yes, also we do award winners of civil cases costs, so if the band stay the course the big bad want to be multinational will have to pay for all the lawyer fees.
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Anonymous Coward, 13 Jul 2018 @ 9:44pm

Re: Re: Re: Asshattery?
Maybe he prefers Scalia's terms: "gollywaddles", "argle-bargle", "pure applesauce", and "jiggery-pokery".
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Mike Masnick (profile), 14 Jul 2018 @ 12:34am

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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The Wanderer (profile), 14 Jul 2018 @ 4:01am

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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Anonymous Coward, 14 Jul 2018 @ 9:52am

Re: Re: Re: It's not about the market space

This is one of those subjects where I'm honestly not sure what the perfect way to resolve the problem is,

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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Anonymous Coward, 14 Jul 2018 @ 9:59am

Wouldn't help that Ruby Tuesday burgers have been implicated in HUNDREDS of cases of salmonella, food poisoning, employees ejaculating into customers food (men women AND kids) and a host of other nasty violations.
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Wendy Cockcroft, 16 Jul 2018 @ 7:11am

Re:
Has anybody got Mick Jagger's phone number?
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Wendy Cockcroft, 16 Jul 2018 @ 7:14am

Re: Re: Re: It's not about the market space
Guys, they're in the same market as the Rolling Stones. Start there.
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Flakbait (profile), 16 Jul 2018 @ 7:33am

Re: Re:
867-5309
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Wendy Cockcroft, 18 Jul 2018 @ 2:45am

Re: Re: Re:
Good one!
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Andrei Mincov | Trademark Factory®, 24 Jul 2018 @ 9:44am

Now that this dispute has become public, the restaurant will probably write it off on its overzealous lawyers.

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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