Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc.
783 F.3d 527
| 5th Cir. | 2015Background
- Haydel Enterprises created a "Mardi Gras Bead Dog" mascot (word and design marks) in 2008, registered both trademarks with the PTO (2009) and obtained a copyright registration for "Bead Dog" (2012); Haydel sold related jewelry, clothing, and king cakes.
- Nola Spice Designs (Duarte) handcrafted bead-dog jewelry sold online using the generic term "bead dog" (not "Mardi Gras Bead Dog"); Duarte learned the craft as a child and uses wire-and-bead construction (traditional form).
- Haydel sent a cease-and-desist letter (2012); Nola Spice filed for declaratory judgment and cancellation of Haydel’s marks; Haydel counterclaimed for trademark infringement, unfair competition, dilution, copyright infringement, and LUTPA violations.
- District court granted summary judgment to Nola Spice: ruled Haydel’s word and design marks were descriptive (or generic) and lacked secondary meaning, cancelled the registrations, and entered judgment against Haydel on Lanham Act claims, copyright, dilution, and LUTPA.
- Fifth Circuit affirmed: marks were not inherently distinctive, failed to show secondary meaning, no protectable trade dress/source-identifying use, no substantial similarity in protectable copyright elements, and therefore Haydel’s Lanham Act and state claims failed.
Issues
| Issue | Haydel's Argument | Nola Spice's Argument | Held |
|---|---|---|---|
| Distinctiveness of word mark ("Mardi Gras Bead Dog") | Term is suggestive or arbitrary as applied to Haydel’s goods; registrant presumptively entitled to protection | Term is descriptive or generic for Mardi Gras-themed bead-dog goods and thus unprotectable absent secondary meaning | Term is descriptive (conveys product characteristic) and lacks secondary meaning; not protectable |
| Distinctiveness of design mark (bead-dog image) | Design is a distinctive rendering of a mascot with original elements (eyes, nose, tail, necklace) | Design is essentially the traditional bead-dog image (common, longstanding Mardi Gras motif) and not inherently distinctive | Design is not inherently distinctive (mere refinement of well-known form) and lacks secondary meaning |
| Secondary meaning (across both marks) | Advertising, Paws on Parade statues, website use, sales and promotion created public association with Haydel | Haydel’s use, sales volume, advertising reach, and press are insufficient to show consumer association with a single source | No genuine issue of material fact; evidence insufficient to show secondary meaning; burden on registrant not met |
| Unfair competition / §43(a) (passing off) | Nola Spice’s use of bead-dog images and Paws on Parade photos caused consumer confusion and misled consumers | Because marks/design are not source-identifying, use cannot cause actionable confusion under §43(a) | Claim fails: absence of protectable, distinctive mark means no actionable false designation of origin |
| Copyright infringement (substantial similarity) | Duarte copied protectable elements (notably the bead-sphere necklace) of Haydel’s copyrighted design | Duarte’s work reflects traditional/unprotectable elements; any similarity is limited and not substantial as to protectable expression | No substantial similarity of protectable elements as a matter of law; copyright claim fails |
| Trademark dilution (federal & Louisiana) | Marks (famous/distinctive) are diluted by Nola Spice’s use | Marks are not distinctive/famous and cannot be diluted | Claim fails because marks are not distinctive/famous under dilution standards |
Key Cases Cited
- Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009) (summary judgment standard and trademark precedent)
- Wal–Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (U.S. 2000) (product-design trade dress requires secondary meaning to be protectable)
- Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2010) (tests for inherent distinctiveness of word and design marks)
- Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983) (secondary meaning factors)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (U.S. 2003) (limits of §43(a) and the law of "passing off")
- Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559 (5th Cir. 2005) (registration presumption and burden to prove secondary meaning when mark is descriptive)
- Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998) (effectiveness of advertising, not raw dollars, for secondary meaning)
- Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (U.S. 1991) (originality requirement for copyright protection)