8 Times Companies Were Sued Over Their Slogans

Flickr User Jason Lam/Flickr User Eden, Janine and Jim

Big companies are careful to protect their trademarked slogans—and for good reason. Failure to do so can see a company lose its trademark for allowing it to become diluted. Trademark law is designed to protect the consumer from market confusion, not to protect established companies from upstarts looking to capitalize on brand recognition. Thus, diligence in protecting a trademarked slogan against copycats—intentional or otherwise—is incumbent on the company. This results in an awful lot of trademark suits. But we combed through the news to pick a few favorites from the (somewhat) recent past.

1. Barnes and Noble vs.

This is a story about how we all took our commerce online in the late 1990s, and how started out selling nothing but books. B&N tried to take their model to the web as well, but their clunkier offshoot couldn't keep up with Amazon's main model of business. By 1999, according to a Wired article, Amazon was responsible for 75 percent of all books bought online, while could claim just 15 percent. Desperate for a way to slow the advance of their competitor, Wired characterizes Barnes and Noble as having "lashed out at Amazon with that most traditional of competitive weapons: the lawsuit."

The suit, filed in May 1997, argued that Amazon's advertised claim to be "Earth's biggest bookstore" infringed on Barnes and Noble's slogan, "World's largest bookseller," and wasn't entirely accurate. Since they didn't actually stock books in-house—ware- or otherwise—but instead had to source them from publishers or distributors, was a book "broker" and not a book "store," the lawsuit claimed. In turn, Amazon countersued for "unfair competition, alleging [Barnes and Noble] improperly omits sales tax for books it sells online."

Ultimately, both companies were allowed to keep their slogans but, as Wired put it, the lawsuit "reinforced the view of Barnes & Noble as an old, tired, unhip giant—exactly the wrong image to project to the burgeoning Web audience."

2. Under Armour vs. Nike

"Ten years ago, Under Armour became a household name when the brand asked athletes everywhere to 'Protect this House.' The response in the iconic commercial, and throughout the years, has been the same: I WILL," Under Armour founder Kevin Plank said in a news release last year.

He was defending his company's slogan against rival Nike, who it turns out also WILL. Baltimore-based Under Armour claimed that their trademarked use of the declarative "I will" in conjunction with advertising dates back to 1998 and is compromised by Nike's recent campaign, which includes taglines such as "I will finish what I started," and "I will sweat while they sleep."

In turn, Nike argued that the generic noun-verb construction need not be trademarked and pointed to this 1995 commercial in which they also paired the words "I" and "will."

Ultimately, the athletic wear powerhouses reached a settlement earlier this year without disclosing the terms.

"The litigation has been resolved on a confidential and mutually agreeable basis," Nike said in a statement. Under Armour, which had requested the rival pay punitive damages, refused to comment because lawsuits are rarely "mutually agreeable."

3. Finish Strong LLC vs. Nike

Under Armour might have been the biggest competitor to accuse Nike of trademark infringement, but it wasn't the last. Just this year, a motivational apparel company in Chicago called Finish Strong LLC filed a suit against Nike for use of their trademarked name on a recent line of shirts.

I guess Just Do It doesn't sell like it used to.

4. Pizza Hut vs. Papa John's

You probably know that Papa John's claims to have better ingredients and, thus, better pizza. What you don't know—because they won't tell you or anyone else—is what exactly those ingredients are, and why they make such a difference. Back in 1998, Pizza Hut, the nation's largest pizza chain, took issue with this ambiguous implied attack on their ingredients and filed a suit that such a slogan was false advertising.

Initially, a jury agreed that there was no scientific evidence to support that one pizza was empirically better than the other. A judge barred Papa John's from using the "Better ingredients. Better pizza" slogan and awarded Pizza Hut $467,619 in damages. However, an appeals court later reversed the decision on the grounds that "better" is a subjective statement of personal taste, and consumers did not rely on the claim to inform their decision. In turn, Pizza Hut appealed this ruling, taking the case all the way to the Supreme Court, who declined to hear it, without comment, leaving the slogan intact.

5. Big Sky Brewing Co. vs. Anheuser-Busch

You may remember the "hold my beer and watch this" web videos created for Bud Light last year, which were written and directed by John Krasinski. If you don't remember them, you have only humorless descriptions to go on because, contrary to the ethos of the internet, they've disappeared. Their removal was part of an agreement reached between Bud Light's parent company, Anheuser-Busch, and Montana-based craft brewer Big Sky. The latter filed a federal lawsuit last year claiming it has held a trademark since 2009 for the phrase “hold my beer and watch this," which appears on some of their beer cans.

"Countless other videos and jokes use the same or similar words as a punch line or hashtag," said Rob McCarthy, A-B’s vice president of Bud Light marketing in defense of the videos at the time. But ultimately, A-B agreed to remove the videos in exchange for Big Sky voluntarily dropping the suit.

6. Chick-fil-A vs. "Eat More Kale"

Perhaps the only thing a fast food chicken sandwich and a bundle of kale have in common is that their respective proponents would like you to "eat more" of them. And that's exactly where Bo Muller-Moore ran into some legal trouble.

The Vermont folk artist became known in the early 2000s for his "Eat More Kale" shirts, which took advantage of the superfood's sudden cultural cachet. Unfortunately, outspoken vegetarians and farmers market aficionados weren't the only ones to take notice. In 2006, Chick-fil-A sent him a cease and desist letter, claiming the shirts infringed on their trademarked slogan: Eat Mor Chikin, often shown sloppily written by a "renegade cow" looking to direct attention away from beef.

The Vermont Arts Council provided Muller-Moore with free legal help, and initially a series of strongly worded letters persuaded Chick-fil-A to quietly back down. However, in 2011, Muller-Moore applied to trademark his slogan and once again heard from the fast food giant.

"Your client's misappropriation of Chick-fil-A's EAT MOR CHIKIN Intellectual Property, to play off of and benefit from the extraordinary fame and goodwill of Chick-fil-A's trademarks, copyrights, and popular promotional campaign, is likely to cause confusion of the public and dilutes the distinctiveness of Chick-fil-A's intellectual property and diminishes its value," the company wrote to Muller-Moore's lawyer.

"My client's phrase shares only six out of twelve of the same letters as your client's phrase and none of the imagery or conceits," came the response. "My client has no cow designs which appear in conjunction with the phrase 'Eat More Kale.'"

Last year, the U.S. Patent and Trademark Office rejected Muller-Moore's efforts to trademark his slogan. This does not mean he is barred from continuing to use the phrase commercially. But without legal protection, he will likely continue to be subject to lawsuits from Chick-fil-A.

7. NYC Street Artist vs. Apple

Just last month, New York City street artist James De La Vega had his lawyer send a cease and desist letter to Apple for using the phrase "You're more powerful than you think" at the center of their new iPhone 5s marketing campaign.

The inspirational slogan has been part of the artist's "Become Your Dreams" series for close to a decade.

Other companies, like Tory Burch and Amazon, have used De La Vega's artwork and slogans in licensed deals, and he seeks a similar, compensated, arrangement with Apple.

8. Mister Softee vs. Master Softee

No offense to the Master, but this one feels a little bit obvious. Jim Conway, owner of the New Jersey-based Summer staple Mister Softee, filed a lawsuit earlier this year against his former employee for launching a knock-off ice cream truck empire out of Queens. This isn't the first time Conway's company has taken legal action against copycats; the mid-1990s saw more than 10 similar trademark infringement lawsuits against rival ice cream trucks.

Beyond the only-one-letter-different names, there are a number of too-close-for-coincidence similarities between the companies. Mister Softee's slogan is "The Very Best"; Master Softee touts itself as "The World's Best." The trucks look similar and blast a similar (infectious) tune, and both companies feature a conehead mascot complete with a blue suit and red bow tie.

The suit was filed in March, and just last week, a judge ruled that Master Softee owner Dimitrios Tsirkos had "adopted his truck designs with the object of achieving an appearance similar to plaintiff's Mister Softee trucks." In an attempt to stay on the streets, Tsirkos is now revamping the look of his trucks.

job secrets
10 Secrets of Hotel Room Service

Guests visiting New York City's Waldorf Astoria hotel in the 1930s enjoyed an amenity that was unheard of at the time: waiters delivering meals directly to their rooms. While the Astoria’s reputation for luxury has endured, room service is no longer exclusive to five-star stays. Roughly 22 percent of the country’s 54,000 hotels [PDF] are willing and able to bring breakfast, lunch, or dinner to people who prefer to eat while splayed out on a large and strange bed.

To get the scoop on what goes into getting food from the kitchen to your floor, Mental Floss spoke with Matt, a hospitality specialist who spent a total of 10 years working in and around room service for a major San Francisco hotel. Matt preferred not to use his last name; since his stories sometimes involved naked people, undercooked chicken, and Oprah, you can understand why. Below, check out a few things you should know before you dig into that tray.


When a room service delivery employee takes a tray from the kitchen to your room, it’s typically covered in a metal lid to retain heat and to prevent other guests from sneezing on it. The higher up you are, the longer it has to travel—and the more that lid traps steam, soaking your food in moisture. “Food sweats in there,” Matt says. “Instead of having crispy, toasted bread, you get wet toast. The longer it stays in there, the worse it gets.” If you want crunchy fries, you’d better be on the first couple of floors.


A seafood dinner is presented on a plate

That lid is a nuisance in other ways. Because it traps heat, it’s effectively cooking your food in the time it takes to get from the chef’s hands to yours. “If you order a steak medium, it will probably be medium well by the time it gets to you,” Matt says. While you can try to outsmart the lid by requesting meat be cooked a notch lower than your preference, it's not so easy to avoid overcooked fish—which will probably also stink up your room. Instead, stick with burgers, club sandwiches, or salads. According to Matt, it’s hard to mess any of them up.


Just because you see a menu in your room, it doesn’t mean the hotel has a kitchen or chef on-site. To cut costs, more hotels are opting to out-source their room service to local eateries. “It might be ‘presented’ by the hotel, but it’s from a restaurant down the street,” Matt says. Alternately, hotels might try to save money by eliminating an overnight chef and having food pre-prepped so a desk clerk or other employee can just heat it up. That’s more likely if sandwiches or salads are the only thing available after certain hours.


Two coffee cups sit on a hotel bed

No, not for the reason you’re thinking. Because so many hotel guests are business travelers who are away from home for weeks or months at a time, some of them get tired of eating alone. When that happens, they turn to the first—and maybe only—person who could offer company: the room service waiter. “People are usually traveling alone, so they’ll offer you food,” Matt explains. Sometimes the traveler is a familiar face: According to Matt, he once sat down to eat with Oprah Winfrey, who was eating by herself despite her suite being filled with her own employees. He also says he had a bite with John F. Kennedy Junior, who wanted to finish watching Fast Times at Ridgemont High before heading for his limo.


Busy hotel kitchens aren’t always paying attention to whether the chicken wings they buy in bulk are frozen raw, frozen cooked, or somewhere in between. “Ask for them extra crispy,” Matt says. That way, they’ll be cooked thoroughly regardless of their freezer status. “I recommend that to everyone.”


A hotel guest pours milk into a bowl of cereal

Breakfast is undoubtedly the busiest time for room service, and those little cards that allow you to check off your menu items the night before are a huge help. “It’s great for everybody involved,” Matt says. “The kitchen can pace themselves and you can get your food on time.”


Yes, guests answer the door barely clothed. No, this is not optimal. “We don’t want to see it,” Matt says. “It's something we dealt with numerous times.” While it's likely your waiter will use discretion, any combination of genitalia, drugs, or illicit activity is best kept out of their sight.


A hotel room service tray sits in a hallway

That move where you stick your soggy fries outside your door? It can lead to some awkward encounters. Matt says he’s seen other guests stop, examine trays, and then pick up discarded food from them. Other times, people leave unimaginably gross items on the trays. “I’ve found condoms on there. Divorce paperwork. All kinds of things.”


Weird people aside, “We don’t really want it out there,” Matt says. “It stinks.” Instead, dial 0 for the front desk and let them know you’re done eating. They’ll dispatch someone to come and get it.


A tip is placed near a hotel check

People pay out the nose for room service, with hotels adding surcharges for “service” and “in-room” dining that can turn a $5 club sandwich into a $15 expense. That’s not great news for guests, but it does mean you don’t need to feel bad about not offering a cash tip. Those service fees usually go straight to the employees who got your food to your room. “I never tip,” Matt says. “Most of the time, the service and delivery charges are given to the waiter or split between the people who answered the phone and pick up the tray. It’s better to leave it all on paper to make sure it gets divided up.”

Big Questions
What is Mercury in Retrograde, and Why Do We Blame Things On It?

Crashed computers, missed flights, tensions in your workplace—a person who subscribes to astrology would tell you to expect all this chaos and more when Mercury starts retrograding for the first time this year on Friday, March 23. But according to an astronomer, this common celestial phenomenon is no reason to stay cooped up at home for weeks at a time.

"We don't know of any physical mechanism that would cause things like power outages or personality changes in people," Dr. Mark Hammergren, an astronomer at Chicago's Adler Planetarium, tells Mental Floss. So if Mercury doesn’t throw business dealings and relationships out of whack when it appears to change direction in the sky, why are so many people convinced that it does?


Mercury retrograde—as it's technically called—was being written about in astrology circles as far back as the mid-18th century. The event was noted in British agricultural almanacs of the time, which farmers would read to sync their planting schedules to the patterns of the stars. During the spiritualism craze of the Victorian era, interest in astrology boomed, with many believing that the stars affected the Earth in a variety of (often inconvenient) ways. Late 19th-century publications like The Astrologer’s Magazine and The Science of the Stars connected Mercury retrograde with heavy rainfall. Characterizations of the happening as an "ill omen" also appeared in a handful of articles during that period, but its association with outright disaster wasn’t as prevalent then as it is today.

While other spiritualist hobbies like séances and crystal gazing gradually faded, astrology grew even more popular. By the 1970s, horoscopes were a newspaper mainstay and Mercury retrograde was a recurring player. Because the Roman god Mercury was said to govern travel, commerce, financial wealth, and communication, in astrological circles, Mercury the planet became linked to those matters as well.

"Don’t start anything when Mercury is retrograde," an April 1979 issue of The Baltimore Sun instructed its readers. "A large communications organization notes that magnetic storms, disrupting messages, are prolonged when Mercury appears to be going backwards. Mercury, of course, is the planet associated with communication." The power attributed to the event has become so overblown that today it's blamed for everything from digestive problems to broken washing machines.


Though hysteria around Mercury retrograde is stronger than ever, there's still zero evidence that it's something we should worry about. Even the flimsiest explanations, like the idea that the gravitational pull from Mercury influences the water in our bodies in the same way that the moon controls the tides, are easily deflated by science. "A car 20 feet away from you will exert a stronger pull of gravity than the planet Mercury does," Dr. Hammergren says.

To understand how little Mercury retrograde impacts life on Earth, it helps to learn the physical process behind the phenomenon. When the planet nearest to the Sun is retrograde, it appears to move "backwards" (east to west rather than west to east) across the sky. This apparent reversal in Mercury's orbit is actually just an illusion to the people viewing it from Earth. Picture Mercury and Earth circling the Sun like cars on a racetrack. A year on Mercury is shorter than a year on Earth (88 Earth days compared to 365), which means Mercury experiences four years in the time it takes us to finish one solar loop.

When the planets are next to one another on the same side of the Sun, Mercury looks like it's moving east to those of us on Earth. But when Mercury overtakes Earth and continues its orbit, its straight trajectory seems to change course. According to Dr. Hammergren, it's just a trick of perspective. "Same thing if you were passing a car on a highway, maybe going a little bit faster than they are," he says. "They're not really going backwards, they just appear to be going backwards relative to your motion."

Embedded from GIFY

Earth's orbit isn't identical to that of any other planet in the solar system, which means that all the planets appear to move backwards at varying points in time. Planets farther from the Sun than Earth have even more noticeable retrograde patterns because they're visible at night. But thanks to astrology, it's Mercury's retrograde motion that incites dread every few months.

Dr. Hammergren blames the superstition attached to Mercury, and astrology as a whole, on confirmation bias: "[Believers] will say, 'Aha! See, there's a shake-up in my workplace because Mercury's retrograde.'" He urges people to review the past year and see if the periods of their lives when Mercury was retrograde were especially catastrophic. They'll likely find that misinterpreted messages and technical problems are fairly common throughout the year. But as Dr. Hammergren says, when things go wrong and Mercury isn't retrograde, "we don't get that hashtag. It's called Monday."

This story originally ran in 2017.


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