GULFPORT, Miss. (CN) – A Mississippi convenience store must face claims that it ripped off comedian Larry the Cable Guy’s tagline “Git-R-Done,” a federal judge ruled Wednesday.
The production company owned by Daniel Lawrence Whitney, better known by his stage name Larry the Cable Guy, sued the Giterdone C Store in Diamondhead, Miss., claiming it deliberately chose its name to capitalize on the fame and popularity of the comedian’s well-known catchphrase.
Git-R-Done Productions also accuses the gas station and convenience store of selling products that violate its federal trademark registrations, according to the company’s 2015 lawsuit claiming trademark infringement, trademark dilution and unfair competition.
The convenience store, which opened in 2013, has denied the allegations in court documents, arguing that Larry the Cable Guy did not invent the “Git-R-Done” phrase, and that it should be deemed unprotected because it is a generic term.
The store also disagreed with Whitney’s claim that its name is likely to cause consumer confusion.
But a federal judge found Wednesday that while companies like Shell, Camel and Apple also did not invent those words, “they are still entitled to trademark protection in the context of gasoline, cigarettes, and computers.”
“None of the evidence cited by defendant leads this court to conclude as a matter of law that Git-R-Done is generic,” U.S. District Judge Louis Guirola Jr. wrote in the Dec. 28 ruling. “Likewise, the Court [is] not persuaded by defendant’s argument that plaintiff’s mark is not entitled to protection because Larry the Cable Guy did not invent the term ‘Git-R-Done.’”
The court also ruled that marks do not have to be identical to create a likelihood of confusion.
Git-R-Done Productions owns 23 federally registered trademarks related to the comedian’s catchphrase that are licensed to third parties for various products including drinking glasses, cigarette lighters, T-shirts and beer, according to court records.
The company filed its trademark lawsuit after the convenience store ignored two letters urging it to stop selling merchandise using the name “Giterdone.”
Whitney, 53, rose to fame as Larry the Cable Guy, a stand-up comedian, actor and voice artist known for his Southern-style and blue-collar-based humor.