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.

Mailbag

It's always wonderful to receive letters. If you have any comments or questions, do not hesitate to write to averna@anthonyverna.com.

If the persona Mean Gene was created by Titan Sports or by Gene Okerlund while employed or to get employed by Titan Sports, I would think Titan Sports owns the mark, registered or not. Gene Okerlund's complaint against Hot Stuff Foods is then moot. Titan Sports would have the only valid complaint. And since Titan Sports declined to pursue registration of "Mean Gene", Hot Stuff Foods seems to be in the clear.

-Mark Hagenau (Derry, NH)

Mark, I can understand why you'd want to think this. What is tricky about trademarks, however, is that they live and die. Trademarks can also come back to life - you can think of it as resurrection or reincarnation. That is, a trademark can come back in the same exact form as it was. "MENE GENE" as a wrestling personality, involved in professional wrestling telecasts and appearances vs. "MENE GENE" in some other form. Of course, the other form relates back to the original - "MENE GENE" in the wrestling industry. Titan Sports may have dropped the application, but the ultimate lesson here is that the mark could come back in some form if Okerlund isn't a part of Titan Sports and the WWE and, therefore, Titan Sports no longer uses it. If Okerlund himself only uses it to sell himself, then the argument can easily be made that the mark, although not registered, belongs to him.

(On a side note, when a trademark is unregistered, it is referred to as a "common law" trademark. I'll use the proper terminology from now on, but wanted to introduce everyone to the concepts first.)


...[T]he economics are clear, namely, that big pharma can only develop new drugs like this, and give away drugs to third world nations, if it continues to milk the middle class of America for all it is worth.
....
But the purpose of anti-trust laws are to protect the consumers and smaller companies. Anti-trust laws keep big companies from controlling markets to the loss of consumers and smaller companies that would make the market more competitive. This is what Slate seems to be pointing to.
But Anthony, how do we protect stock values and markets and make drugs affordable?

-Brian Sipe (Philadelphia, PA - www.attorneysipe.com)

No letter from a fellow attorney is complete without a plug to his firm's website.

As you can read, this e-mail was much longer, but needed to be cut else this entry would be too long.

Part of what's missing in the Slate article referred to on Schering-Plough, the FTC, and the DOJ is the relationship between all intellectual property laws and and anti-trust laws like the Sherman Act. Intellectual property laws allow the owners to have a monopoly. It effectively carves out a monopoly on what is owned. A trademark allows the owner to use those words or that logo for that product in that industry. A copyright allows the owner to make that piece of art (usually) alone. A patent allows an inventor to make that invention alone. So this is the tug-of-war that is going on here. The monopoly is carved out and if someone else wants to make a generic version of a drug, then all the patents must be expired.

Wrestling's Golden Era

Mean Gene Okerlund - remember him? - is suing his nephew's company.

Jeff Okerlund was president of Hot Stuff Foods, based in Sioux Falls, SD. Hot Stuff Foods had a Mene Gene line of foods. This includes Mean Gene's Burgers and Mean Gene's Pizza.

According to this brief article, Hot Stuff Foods wrongly registered trademarks on both brand names without permission of Gene Okerlund. Of course, Hot Stuff Foods denies that its trademark registrations were done improperly. Jeff Okerlund insisted on the stand that if it were done properly, Gene Okerlund would have registered his name as a mark and then it would have been licensed to Hot Stuff Foods.

I would agree if Mean Gene Okerlund was the name that Gene Okerlund used himself to promote himself. I remember it always in connection to wrestling, however. A quick search of the USPTO trademark database finds that "MEAN GENE" (U.S. serial number 74099624) was a mark that Titan Sports, Inc, doing business as The World Wrestling Federation filed, but never registered. That application is now abandoned, though I'd argue that "Mean Gene" Okerlund was always associated with wrestling.

What else strikes me as interesting is that "MEAN GENE'S PIZZA" was filed by both Eugene Okerlund and Orion Food Systems (which seems to be a predecessor to Hott Stuff Foods) in different applications. In Okerlund's application, a final refusal to register the mark was recently mailed. "MEAN GENE'S BURGERS," however, is owned by Hot Stuff Foods only.

Certainly, this is a confusing mess and I don't envy the decision maker in this trial (since day two of the trial was yesterday, June 20, 2006). With nobody owning a registered trademark, is Gene Okerlund trying to assert what is called "common law" trademark?

Does Gene Okerlund then really own the mark of "MEAN GENE"? Would he have been "Mean Gene" Okerlund without the wrestling industry? I would argue that he would not be known at all. That leads me to believe he would not own any rights in "MEAN GENE" as a mark - but maybe he has been able to assert common law marks by making public appearances outside of wrestling matches and television shows owned by Titan Sports, Inc.

The more that I think about it, the more interesting this case becomes.