Question

Haydel enterprises owned and operated a bakery in New Orleans, Louisiana, selling pastries such as Mardi Gras king cakes. Haydel asked an artist to design a “bead dog” to replicate the dogs made out of beads thrown at Mardi Gras celebrations. Haydel registered the words “MarDi Gras BeaD DOG” and the bead dog design as trademarks covering items such as king cake pastries, jewelry, and clothing. Over a six-year period, Haydel sold about 80 clothing items and 300 jewelry items featuring bead dogs, plus an unidentified number of king cakes with bead dogs. One magazine article featur- ing Haydel’s products called bead dogs “an iconic Mardi Gras symbol.” Three years after Haydel reg- istered the bead dog trademarks, raquel Duarte began selling jewelry featuring bead dogs. Duarte filed a lawsuit against Haydel in which she asked the court to declare that she was not breaking any trademark law by selling the bead dog jewelry and requested Haydel’s trademarks be canceled. Duarte argued that Haydel’s trademarks were descriptive in nature and had not acquired distinctive- ness whereby customers associated the trademarks with Haydel’s goods. was Duarte correct?

Answer 1

Yes, she was correct as dtermined by The Court in the case of Nola Spice Designs, LLC v. Haydel Enterprises, Inc.. where is was asserted that Haydel's counterclaim for trademark dilution is wrong. Nola Spice asserts that one of the elements required to prove trademark dilution is that the marks are "famous as distinct" as is noted in Checkpoint Fluidic Systems International, Ltd. v. Guccione, 888 F. Supp. 2d 780, 793-94 (5th Cir. 2012); and, that Haydel will not be able to prove this element. Additionally, Nola Spice asserts that they have not "adopted" either of Haydel's Marks because neither of them have used the phrase MARDI GRAS BEAD DOG or made a statue to resemble the BEAD DOG DESIGN.

Further it was contended that that Haydel's marks are generic,merely descriptive and have not taken on a secondary meaning as is required, thus not protected as explained in Firefly Digital Inc. v. Google, Inc.

Thus, on the above points, court dismissed the trademark noting down following points:

• there is no likelihood of confusion between Nola Spice's jewelry and Haydel's products, which is essential to finding trademark infringement under CheckPoint Fluidic Systems International, Ltd. v. Guccione, 10-4504, 2012 WL 3255200, *4 (E.D. La. Aug. 8, 2012) (Vance, J.), and
• there is no evidence that Nola Spice or Duarte ever used the phrase MARDI GRAS BEAD 12 DOG or made bead dog merchandise that copies Haydel's purported BEAD DOG DESIGN trademark

reference: https://cases.justia.com/federal/district-courts/louisiana/laedce/2:2012cv02515/152138/105/0.pdf