Corny Dogs gets preliminary injunction in a case involving claim of trademark dilution against competitor Victoria Warner
Date Published: Jun 24, 2021
The Plaintiff Fletcher’s Original State Fair Corny Dogs, LLC (“Fletcher’s”), a corporate entity, was a family business engaged in the business of selling “corn dogs” for the last 80 years at the State Fair. They filed a civil action against two estranged family members Victoria Jace Fletcher Christensen (“Jace Chrisyensen”), Victoria Warner Fletcher (“Victoria Fletcher”) and their limited liability company Fletcher-Warner Holdings LLC ("FWH") at the United States District Court, E.D. Texas, Sherman Division (“District Court”). The action was instituted in response to the alleged trademark infringement of Fletcher’s marks pertaining to corny dogs. The Plaintiff asserted that Defendants, without their consent, were using similar trademark as well as service marks consisting the term "Fletch” for promotion of their own products and services, which caused enormous confusion among the consumers and public regarding the source, affiliation and sponsorship of Defendants’ goods/services. Fletcher’s initiated this civil claim for trademark infringement and unfair competition under the Lanham Act along with a trademark dilution claim under the Texas Anti-Dilution Act. The District Court granted the preliminary injunction prohibiting the Defendants from using the said marks.
The corny dog story of Fletcher's family’s dog began during the World War 2. The two brothers i.e., Neil “Fletch” Fletcher Sr, and Carl Fletcher (collectively “Fletcher’s”), who were vaudeville performers in Dallas during the 1930s, were given an offer for a food booth by the officials of State Fair. The brothers once came across a baker who served to them a dish of hot dogs and corn meal, which they liked immensely. Therefore, the brothers too wanted to serve the same dish. However, since the preparation of the said dish was too time-consuming, the brothers decided to experiment with the recipe and tried to devise another method of frying which resulted in invention of “corn dogs”, which the brothers started to serve on a stick. They started selling it in the fairgrounds in Fair Park of Dallas during summer of 1942. Subsequently, owing to the grand success of their newly invented dish, they started selling it every year. The total amount of corn dogs that they sold every year was around 500,000-600000. They then expanded their business beyond the state fair, and for a long period, they sold corn dogs at the Byron Nelson Golf Tournament. Fletcher’s had also sold their corn dogs at the Terrell Jubilee at the Weatherford Peach Festival, and University of North Texas football games.
Despite the demise of Neil and Carl Fletcher, the family business continued to be exist, and was took over by Neil’s sons, Neil "Skip" Fletcher Jr. & Bill Fletcher. Skip and Bill’s children as well as Skip’s wife Glenda "G.G." Fletcher, too were engaged in the said business. Subsequently, in the year 2001, Skip Fletcher incorporated “Fletcher's Original State Fair Corny Dogs, LLC” to run the family business and after the demise of Skip in the year 2017, G.G. Fletcher started to manage the said business. In spite of several name changes and corporate restructuring, it was undisputed that “Fletcher's Original State Fair Corny Dogs, LLC” was the successor of all its predecessors-in-interest.
For a very long time, the mark “Fletcher’s” and other allied trademarks and service marks were used by the Fletcher’s in furtherance of its corn dogs business. Owing to financial difficulties and bankruptcy, Fletcher’s lost the ownership of its marks and in the year 1980 the marks were sold to Circle T Foods Co., Inc. d/b/a State Fair Foods, Inc. ("State Fair Foods"). However, in the year 1992, the State Fair Foods granted a license to Fletcher’s to use the said marks at the fairground of Dallas, the Byron Nelson Golf Tournament in Dallas, and additional events and locations on a written request. Since the year 2011, Fletcher's Original State Fair Corny Dogs, LLC have had the right to operate under the license agreement.
In the year 2019, the Defendants Victoria Fletcher “Victoria” and her daughter Jace Chrisyensen began a company called “Fletch” to sell corn dogs at various places. Interestingly, Victoria had divorced Craig Fletcher, Skip’s son, but retained the surname Fletcher. However, neither Victoria nor her daughter had any ownership in the Fletcher’s business.
On 26th July 2019, Fletcher’s sent a cease-and-desist demand letter to Defendants asking them to refrain from using their Fletch mark as it was causing confusion and deception among the general public. The Defendants, however, replied that they were operating within well-defined parameters, which left no scope of instituting an action against them.
Consequently, the Plaintiff filed a complaint against the Defendants with respect to trademark infringement, unfair competition and trademark dilution under the Texas Anti-Dilution as well as injunctive reliefs.
The Defendants, in response, filed a motion to dismiss, and contended that the Fletcher’s Unlimited Inc. (“Unlimited”) was also a required party and since it was not joined in the instant suit, the Plaintiff’s suit was liable to be dismissed under Rule 19. Unlimited was formed in the year 1994, majority (80%) of which was owned by the G.G Fletcher. The Defendants alleged that Unlimited used the mark Fletcher in an unauthorized manner and it appropriated the goodwill associated with the said mark and right to use it outside of State Fair.
The District Court rejected these contentions of Defendants while dismissing their motion and granted preliminary injunction in favor of the Plaintiff. The cour0t pointed out that Unlimited was another infringing party which was, at best, a junior user of the marks. The senior user of marks was Fletcher’s. The District Court referred to Ass'n of Co-op. Members, Inc. v. Farmland Indus., Inc., 684 F.2d 1134, 1144 (5th Cir. 1982) and Dall. Cowboys Football Club, Ltd. v. Am.'s Team Props., Inc., 616 F. Supp. 2d 622, 642 (N.D. Tex. 2009) and held that, Rule 19 does not require the joinder of another infringing party. It was highlighted that the Defendants failed to satisfy the test of rule 19 i.e., how without the joinder of Unlimited, the court could not grant complete relief; or how any interest of Fletcher's Unlimited may be impeded or impaired; or how Defendants could be at substantial risk for multiple or inconsistent obligations. Therefore, in light of these observations, an injunctive relief was granted in favor of Fletcher’s and Defendants were restrained from using any confusingly similar marks.