United States: Fifth Circuit Decision Highlights Trademark Protection For Fictional Elements

As previously reported on this blog, the Southern District of Texas ruled in Viacom International Inc. v. IJR Capital Investments LLC that Viacom could assert common-law rights in the trademark THE KRUSTY KRAB for a fictional restaurant on the animated show SpongeBob SquarePants. When defendant IJR took action to launch a real-life THE KRUSTY KRAB restaurant, Viacom asserted infringement of its unregistered trademark and successfully argued that the mark had acquired distinctiveness through the large number of episodes of the show and two feature-length films that featured the mark; extensive licensing of THE KRUSTY KRAB for playsets, Lego sets, video games, aquarium accessories, stickers and shirts; and the extensive advertising expenditures for and promotion of the SpongeBob show. Thus, the district court concluded that IJR's proposed restaurant using an identical mark constituted trademark infringement and unfair competition.

IJR appealed the grant of summary judgment to the Fifth Circuit. In a 2018 decision, a unanimous panel affirmed the district court and agreed that IJR had infringed Viacom's unregistered trademark THE KRUSTY KRAB.

The Fifth Circuit's opinion noted that the fundamental issue on appeal, with reference to the express language in the Lanham Act, is whether Viacom owns a "trademark" that is used "to identify and distinguish" one's goods "from those manufactured or sold by others." 15 U.S.C. § 1127. The opinion noted that although courts have frequently "bypassed the use inquiry and conducted only a distinctiveness analysis," the two issues "are separate questions," and the Court undertook to resolve whether there was a genuine issue of material fact as to whether Viacom "actually uses The Krusty Krab as a source identifier."

This case is notable because it required the court to directly confront an issue that is typically subsumed into the question of whether a mark is distinctive enough to be protectable. Although fictional elements are frequently "distinctive," it is less obvious whether a fictional element, although used within a popular television series, is used as a source identifier. The court set forth examples of cases where a fictional character or element had been found to function as a source identifier, noting that the question is whether the fictional element "as used, will be recognized in itself as an origin for the particular product or service," apart from the overall success or recognition of the show itself. Thus, the court noted previous cases in which:

  • CONAN THE BARBARIAN, a character from a comic book series, could not be used for a pizza restaurant;
  • The distinctive orange muscle car with a Confederate battle flag emblem, called "The General Lee" on the show The Dukes of Hazzard, could not be replicated by a toy company;
  • The fictional newspaper The Daily Planet and the fictional element KRYPTONITE are protectable trademarks associated with the Superman franchise, and thus could not be used for an actual newspaper.

In these examples, the allegedly infringed trademark was a critical and frequently recurring aspect of a fictional work. In another example considered by the Court, however, the Trademark Trial and Appeal Board declined to extend trademark protection to the ROMULAN fictional alien species featured in the Star Trek television series. Although the ROMULAN mark appeared in television episodes, movies, books, licensed toys, puzzles, games and more, the TTAB had concluded that the ROMULAN mark was "only" used "from time to time" and therefore failed to provide a source-identifying function.

Having laid out these examples, the Court found that THE KRUSTY KRAB was analogous to The General Lee, The Daily Planet and Conan the Barbarian, insofar as the mark "appears in over 80% of" SpongeBob episodes; plays a prominent role in the SpongeBob films, musical, video games and licensed merchandise; and is used consistently in both the shows and the merchandise. Thus, there was no genuine issue of material fact with respect to whether Viacom had made trademark usage of THE KRUSTY KRAB.

Turning to the separate distinctiveness inquiry, the Court's record contained sufficient undisputed facts demonstrating acquired distinctiveness that the district court's grant of summary judgment in favor of Viacom was proper. The length of time of the use (18 years), the hundreds of millions of dollars earned in product licensing deals and feature film distribution, and the number of references to THE KRUSTY KRAB by the press and on SpongeBob SquarePants social media platforms all supported the finding that the mark has secondary meaning. Although there was no consumer survey evidence of secondary meaning, Viacom had presented survey evidence on the issue of likelihood of confusion, offering a survey indicating that 35% of survey respondents associated a hypothetical THE KRUSTY KRAB restaurant with Viacom. The court noted that Viacom's expert's Eveready-format survey "resembled a word association test," asking if "the KRUSTY KRAB restaurant [is] affiliated or connected with any other company or organization," but ultimately found that the level of confusion found and the format of the survey were both admissible to weigh in favor of a likelihood of confusion.

The court concluded that while its holding "does not grant trademark protection to Viacom in every context, third parties cannot appropriate the goodwill and reputation of The Krusty Krab by naming a restaurant The Krusty Krab absent a showing that the restaurant was developed in a context sufficient to avoid any likelihood of consumer confusion" (emphasis added). One wonders what such "development" of a distinctive mark into an unlicensed commercial concept might look like that could insulate a junior user from Lanham Act liability. Thus, while the Viacom decision provides practitioners with useful guideposts for when fictional elements are protectable as trademarks (by virtue of trademark usage and distinctiveness), the case was so straightforward on likelihood of confusion due to the identical marks being used for identical services (notwithstanding that the defendant's restaurant was going to feature fried seafood rather than the hamburgers served in the fictional restaurant) that the Court's observation preserves an interesting question for another day.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions