Mene Gene Redux - Though it is not Over

First off, I want to thank Lou Raguse, the journalist who covered the Mean Gene story for KELO-TV in and its website, www.keloland.com, for helping me sort out some of the facts. You can also read the complaint and the judge's written decision for the case.

Jeff Okerlund, former president of Hot Stuff Foods had a handshake agreement with his uncle, "Mean Gene" Okerlund to use the name "Mean Gene" on a food product. When all the Okerlunds left the company, the mark was still used on food. Hot Stuff applied for federal trademark registration on April 14, 1998 and the mark registered on March 14, 2000. Hot Stuff even uses it in press releases.

The brand still sold well, so three of the Okerlunds started their own company with the "Mean Gene's Pizza" mark. This means that they were in direct competition with a registered mark.

It makes me wonder if they even consulted a trademark attorney. On one hand, it is difficult to contest a mark that is registered. (The lesson - ALWAYS register your trademarks.) But maybe this was purposeful. Maybe they are trying to show that the "MEAN GENE'S BURGERS" trademark is not as strong as the Patent and Trademark Office believes. Maybe this is their way of combatting by arguing that the real mark belongs not to Hot Stuff Foods, but to Gene Okerlund. It is a tenuous argument, to say the least. (Why would Hott Stuff have registered the mark if they did not believe it was strong enough to register?)

The decision in the case is not a final decision. A trial did take place in June, but the judge only ruled on a preliminary injunction. The judge has asked for more briefs in order to rule fully on the issues of the case.

Here is my best guess as to the Okerlunds arguement. "MEAN GENE" itself is a "common law" trademark. It belongs to Gene Okerlund. Common law trademarks are established in connection with specific goods and services. Those rights only extend towards markets and geographic areas where the mark is used. Similar marks may exist if they are used in different (or remote) territories or in connection with unrelated products.

The big problem is that even if there is a common law trademark in "MEAN GENE," the arguement returns to the industry. Is it wrestling? What else can it be?

Why should a business register a trademark?

• Nationwide constructive notice of the registrant's claim of ownership.
• Automatic federal court jurisdiction in any trademark lawsuit.
• Evidence of the validity of the mark, of the registrant's ownership of the mark and the registrant's right to use it in commerce.
• Eligibility to recoup attorneys' fees and increased damages.
• Eligibility to record the mark with U.S. Customs so imported goods bearing the mark cannot be imported.