Home » Trademark Law Updates » New Judicial Opinions » Current Summary
Trademark Law Summary
CA Court: Schussler, and not Webster, Owns "Hot Dog Hall of Fame" Mark
Schussler v. Webster
No. 07cv2016 IEG, U.S. District Court for the Southern District of California, 09/22/2008
Companies Mentioned: Schussler Creative, Inc.
Holding
In this suit relating to the "Hot Dog Hall of Fame" mark, the U.S. District Court for the Southern District of California ruled that the owner of an online newsletter at www.thehotdoghalloffame.com, J. Frank Webster, had no enforceable right over this disputed mark. Plaintiff Schussler Creative, Inc. registered this mark, and filed this action for a declaration that its trademark is valid. In ruling in Schussler's favor, the district court held that since Schussler registered the mark, it is presumed valid. A defendant like Webster can rebut the presumption of validity if he used the trademark in commerce prior to Schussler’s registration of the mark. Here, Webster failed to rebut this presumption. Specifically, Webster added a “store” to his website only after the commencement of this lawsuit. Because Webster started this activity after plaintiffs registered the trademark, this activity was not “prior” use. In addition, Webster’s miscellaneous activities had not included any commercial component. An intent to eventually commercially exploit an idea is not sufficient to confer trademark rights or meet the “in commerce” requirement. On this basis, the district court granted plaintiffs' motion for summary judgment.
Detailed Summary
Plaintiffs brought this action, inter alia, for a declaration that Schussler Creative, Inc. owns the trademark for “Hot Dog Hall of Fame.” Opinion, p. 2.
Defendant Webster, also known as “Uncle Frank” and “Mr. Hot Dog,” owned a large collection of hot dog memorabilia which he has been collecting since the 1970’s. He maintained a website with an online newsletter at www.thehotdoghalloffame.com. The last hot dog restaurant he operated closed in 1983. Id.
He had never sought or received money in connection with his activities on his website or with the memorabilia collection, although he considered it more than a hobby. It is his eventual plan to open a museum showcasing the collection with an on-site restaurant and other hot-dog related activities. Id.
On the other hand, plaintiffs developed concepts for themed restaurants. Plaintiffs’ previous projects included the “Rainforest Café” and “T-Rex.” In 2005, Schussler Creative filed a trademark application for the mark “Hot Dog Hall of Fame.” Together with its business partner, RED Development, LLC, (“RED Development”) Schussler Creative is developing a restaurant franchise called “Hot Dog Hall of Fame.” The first “Hot Dog Hall of Fame” opened on August 13, 2008, at the Mohegan Sun Casino at Pocano Downs, Wilkes-Barre, Pennsylvania. Id.
In June of 2007, defendant sent e-mails to various media organizations, hospitality companies, civic leaders, and RED Development regarding plaintiffs’ plan to open the Hot Dog Hall of Fame restaurants. In the e-mails, defendant claimed Mr. Schussler stole the concept of Hot Dog Hall of Fame from defendant; plaintiffs did not own the intellectual property of the Hot Dog Hall of Fame; and Mr. Schussler was a “liar,” a “thief,” and a “con man.” Id.
Presented before the district court was plaintiffs’ motion for summary judgment. In particular, plaintiffs sought a declaratory judgment as to their claim that Schussler Creative has a valid trademark for the mark “Hot Dog Hall of Fame.” Id., p. 4. The district court resolved this motion in plaintiffs’ favor. According to the district court, because Schussler Creative has registered the trademark, it is presumed valid. Id.
Defendant can rebut the presumption of validity if he used the trademark in commerce prior to Schussler’s registration of the mark. Id., referring to Brookfield Comm., Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1047 (9th Cir. 1999). Here, defendant was unable to rebut this presumption, i.e. he used the trademark in commerce prior to plaintiffs’ registration.
Defendant claimed that he has been using “The Hot Dog Hall of Fame” to describe his activities for approximately thirty years. Defendant’s relevant uses of the mark are: (1) registration of the domain name “hotdoghalloffame.com”; (2) maintenance of an on-line store on the website; (3) display of memorabilia at a restaurant in 1983; (4) other miscellaneous activities; and (5) intent to commercially exploit the mark in the future. Looking at all these circumstance, the district court however held that these uses were not sufficiently commercial when viewed individually and in their entirety.
Specifically, defendant added a “store” to his website only after the commencement of this lawsuit. Id., p. 5. Because defendant started this activity after plaintiffs registered the trademark, this activity was not “prior” use. Id., citing Brookfield, 174 F.2d at 1047. Also, defendant used the mark on the wall of a restaurant called “Hot Diggity Dogs” for approximately six months in 1983. This does not constitute “continuous” commercial use up until the registration of the mark by Schussler Creative in 2005, and any trademark rights acquired in 1983 have been abandoned. Id., p. 6, citing L.A. Gear, Inc. v. E.S. Originals, Inc., 859 F. Supp. 1294, 1299 (C.D. Cal. 1994). In addition, defendant’s miscellaneous activities have not included any commercial component.
Finally, the district court considered defendant’s “plan to make money” by eventually opening up a museum to showcase his collection and a restaurant to support that collection. An intent to eventually commercially exploit an idea is not sufficient to confer trademark rights or meet the “in commerce” requirement. Id., citing Brookfield, 174 F.3d at 1052.
In sum, viewing the evidence in the light most favorable to defendant as the non-moving party and considering the totality of defendant’s uses of the mark, the district court found that defendant did not use the mark in a sufficiently “commercial” manner to create an enforceable trademark right. Accordingly, the district court granted plaintiffs’ motion for summary judgment as to the claim for a declaratory judgment of trademark rights.
View a PDF of the judicial opinion.Service
Link to this article · 
Send via E-mail · 
Printable Version (opens in new window)
