Mean Gene Wins Trademark Case . . . for the Most Part
Mean Gene Okerlund of wrestling fame was the center of a trademark dispute in Hot Stuff Foods, LLC v. Mean Gene's Enterprises, Inc., __F.Supp.2d__ 2006 WL 3788813 (D.S.D. 12/13/06). This is a long and unusual opinion where the court ruled for Okerlund on the trademark issues but ruled for Hot Stuff on its unfair compeition claim.
Okerlund entered into an endorsement contract with Hot Stuff that permitted Hot Stuff to market Mean Gene's Burgers and Mean Gene's Pizzas. Hot Stuff entered into contracts with more than 200 licensees and franchisees operating under these brand names and received two federal trademark registrations for Mean Gene's Burgers. Okerlund terminated the contract in 2006 and then sent letters to the franchisees to bring them to his new company. Hot Stuff promptly filed suit.
The court ruled for Okerlund on the trademark claims. The court canceled Hot Stuff's Mean Gene trademarks and found Hot Stuff does not have common law rights in these marks. However, the court ruled for Hot Stuff on the unfair competition claim and entered an injunction against Mean Gene from using the marks until his royalty term expired under the contract.
This brings about the unusual result where (for a limited time) the trademark owner cannot use the trademark, but the party that does not own the trademark has exclusive use. This case serves as a helpful reminder that parties have extensive freedom in structuring intellectual property rights in their contractual agreements.
