HOUSTON (CN) – Determined to open a chain of restaurants called The Krusty Krab, a Houston man’s attorney told the Fifth Circuit on Monday that Viacom does not have trademark rights to the fictional restaurant where cartoon character SpongeBob SquarePants works the grill.
“Are you ready kids? ‘Aye Aye Captain!’ I can’t hear you. ‘Aye aye Captain!’ Ohh, who lives in a pineapple under the sea? ‘SpongeBob SquarePants!’ Absorbent and yellow and porous is he, ‘SpongeBob Square Pants!’”
The theme song to the cartoon series “SpongeBob SquarePants” is ingrained in the minds of fans of the show that has developed a cult following of both children and adults since it premiered on Viacom’s Nickelodeon network in 1999.
Viacom has made more than $12 billion in merchandising revenue from the cartoon, which expanded to two feature films, released in 2004 and 2015, that grossed more than $470 million in ticket sales. The cartoon even inspired an eponymous musical that premiered on Broadway last December.
The cartoon often features SpongeBob at his workplace The Krusty Krab, where he serves up Krabby Patty burgers at a breakneck pace under the watchful eye of the restaurant’s penny-pinching owner Eugene H. Krabs.
Though Viacom has not trademarked the restaurant’s name, it sued IJR Capital Investments LLC in January 2016 for trademark infringement after learning from newspaper articles that IJR’s owner Javier Ramos Jr. was planning to open restaurants in Los Angeles and Houston called The Krusty Krab.
U.S. District Judge Gray Miller sided with Viacom a year ago, citing Fifth Circuit precedent that “ownership of a trademark is established by use, not by registration,” and finding that IJR’s use of the name “creates a likelihood of confusion” that consumers would believe Viacom had licensed its use to IJR.
To win a federal trademark infringement claim, a company must prove it has a protectable ownership interest in the mark and that a defendant’s use of the mark is likely to confuse consumers that there is an affiliation.
IJR appealed to the Fifth Circuit last May and a three-judge panel of the New Orleans-based appeals court heard arguments Monday at the Houston federal courthouse.
In a 40-minute hearing that touched on adjudicated trademark disputes involving the comic books “Superman” and “Conan the Barbarian,” the 1980s TV series “The Dukes of Hazzard,” and the Romulan race of extraterrestrial beings from “Star Trek,” IJR’s attorney Christopher Schaefer argued that Viacom cannot trademark an ornamental backdrop in a cartoon show.
Schaefer said that it would create a huge chilling effect on business owners if they could be held liable for infringement for doing nothing more than filing an intent-to-use trademark application.
“Now our client, all he’s done is filed an intent-to-use application for The Krusty Krab. We don’t have a restaurant, we don’t have a location, we don’t have a theme, we don’t have hardly anything, but still the court found a likelihood of confusion,” Schaefer said.