IP Law Daily, TRADEMARK—D. Minn.: Owner of registered ‘Hammer-Schlagen’ mark for Oktoberfest game must counter evidence of genericness, (Jan 18, 2022)

By Nicole L. Chaney, J.D.

The trademark dispute is rooted in the lengthy cultural history and traditions of the German-Americans in Minnesota.

The federal district court in St. Paul has denied a mark holder’s motion for a preliminary injunction seeking to enforce its registered “Hammer-Schlagen” trademark and trade dress for a German drinking game against the seller of a home version of the game under the name “Minneschlagen.” The court concluded that the plaintiff failed to demonstrate that it was likely to succeed in its action against a competitor in large part based on record evidence showing that consumer use of the mark may have rendered it subject to cancelation as generic. Because the plaintiff failed to demonstrate a likelihood of success on the merits, it was also not entitled to a presumption on the irreparable harm prong of the injunctive relief analysis (WRB, Inc. v. DAMM, LLC, January 14, 2022, Brasel, N.).

WRB, Inc., provides a service offering a game at Oktoberfest and other festivals under the trademark “Hammer-Schlagen,” and sought to enjoin competitor DAMM, LLC, from selling an at-home version of the game under the name “Minneschlagen.”

Hammer-Schlagen mark. WRB did not demonstrate it was likely to succeed on the trademark infringement claim, according to the court. WRB described its service as a game involving players nailing hammers into wide tree stumps; and it uses orange-colored advertising bearing a cross-peen hammer and nail drawing. WRB claims it has sold kits since 1999, but there was no evidence in record to support its claim. The USPTO granted registration for the “Hammer-Schlagen” trademark in 2015 and the trade dress in 2018. DAMM’s game uses a smaller stump; the logo includes a graphic outline of Minnesota along with the game name in capital letters. In December 2020, the USPTO granted competitor rights to “Minneschlagen” as a source identifier for its product.

While WRB proved that it owned registered marks for “Hammer-Schlagen,” the stump, cross-peen hammer, and nails, the competitor rebutted its prima facie case by tendering evidence to show that the consumers used the marks generically, including evidence showing that internet searches for “hammerschlagen” produce search results for hammers, nails, and pieces of wood and not just WRB’s game.

The court noted that while registration and exclusive continuous use of a registered trademark does ordinarily make the trademark incontestable, an incontestable mark is subject to cancellation if, and when, it becomes generic. Here, the competitor tendered evidence of grounds for cancellation under the Lanham Act – i.e., that consumers use “Hammer-Schlagen” generically. While the competitor’s evidence was not dispositive, it was sufficient to create a factual dispute precluding WRB from demonstrating a likelihood of success on the merits of its underlying claim, and consequently, from prevailing on its efforts to enjoin competing uses on grounds of trademark infringement.

Trade dress. WRB enjoyed a presumption that its trade dress for its “Hammer-Schlagen” stump was non-functional requiring the competitor to produce evidence that it the total image of the product – not just individual components – were functional. Because DAMM presented no evidence sufficient to rebut the presumption, the court concluded that WRB would be likely to succeed in showing that the trade dress of its stump was aesthetic and non-functional. On the distinctiveness pong, however, WRB was not likely to succeed. While the court agreed that WRB was entitled to a strong presumption of acquired distinctiveness, DAMM had presented evidence of consumer use of “hammerschlagen” and “the stump” to identify a game bearing no association to WRB. This direct evidence of consumer use was compelling enough to rebut the WRB’s presumption and it did not otherwise demonstrate it was likely to prove it owned the trade dress.

No confusion likely. DAMM’s use was not likely to create confusion among consumers. Because the mark was descriptive, WRB had to demonstrate secondary meaning to prove the strength of the mark. However, DAMM’s evidence was sufficient to raise a question of fact on whether consumer use identified WRB or something else.

WRB also failed to demonstrate that the two marks were confusingly similar. The court noted that each product left consumers with different impressions given their overall impression of the advertising, coloring, and design elements. The product names, while both containing “schlagen,” were insufficient alone to cause confusion. Because WRB’s game was a service and DAMM’s game was a take-home product, the markets were distinct such that consumers were unlikely to be confused by any similarities.

No injury presumed. Once a mark holder demonstrates a likelihood of confusion in a preliminary injunction action, its injury is presumed both according to the jurisdictional precedent and pursuant to the 2020 amendments to the Lanham Act. Here, however, the court noted that WRB had, at best, demonstrated the existence of a factual question and was not entitled to the presumption of injury nor had it otherwise met its burden to prove irreparable harm.

The Case is No. 0:21-cv-01899-NEB-TNL.

Attorneys: Chad A. Snyder (Rubric Legal LLC) for WRB, Inc. Paul T. Dietz (Dietz Law Office LLC) for DAMM LLC.

Companies: WRB, Inc.; DAMM LLC

Cases: Trademark MinnesotaNews GCNNews