February 14, 2019—You might recall that several months ago, we blogged about an intriguing trademark infringement battle between Buc-ee’s and Choke Canyon. In June 2018, the Texan rivals competing in the over-sized gas station market–a real niche, to be sure–went to trial, with Buc-ee’s arguing that Choke Canyon’s alligator logo infringed Buc-ee’s beaver mark:
Incredibly, the Texan jury found in favor of Buc-ee’s. The jury also found that Choke Canyon’s alligator mark diluted (a/k/a “blurred”) the distinctiveness of the beaver mark. However, the jury did not explain why the alligator mark infringed and blurred Buc-ee’s marks. As my colleague Tim Sitzmann previously reported, Buc-ee’s contended the alligator blurred and infringed for at least five reasons:
(i) the use of a black circle encompassing the alligator, (2) use of a yellow background, (3) use of the red-colored tongue of the alligator, (4) prominent use of sharply drawn black edges for the alligator mascots, and (5) the use of letters in raised block font in the name “CHOKE CANYON.”
After the jury verdict, Buc-ee’s moved for a permanent injunction, asking the court to order Choke Canyon not to use, and to remove, a host of similar logos. Here’s the major update: the district court granted Buc-ee’s proposed order almost in its entirety, requiring Choke Canyon to, among other things, stop:
a. any and all sale, offering for sale, distribution, or advertising in connection with the Choke Canyon Logo or any colorable imitation of Buc-ee’s Logo;
b. any and all use of the Choke Canyon Logo…on any labels, signs, prints, packages, wrappers, etc.;
…
e. using the Choke Canyon Logo…on any webpage or websites;
The judge also ordered Choke Canyon to remove any and all viewable alligator logos within 45 days. For a full copy of the permanent injunction order, click this link.
The Buc-ee’s v. Choke Canyon case is a rare glimpse into what happens after a trademark victory in federal court. Over 97% of cases are dismissed or settle before trial, and even fewer receive permanent injunctions. Indeed, Buc-ee’s itself recently suffered defeat in a trademark case against Bucky’s convenience stores based in Chicago. You can’t win ’em all, I guess; the road to gas station “world domination”isn’t so easy after all.
To answer the question posed in the graphic: perhaps not.
After the court issued its permanent injunction, Choke Canyon filed a status update reporting on its compliance and documenting its efforts to remove or limit the viewability of the alligator mark. Included in its submission were numerous photos of Choke Canyon’s new mark:
Texan gas stations sure do like to put their logos on everything, everywhere. This makes them designed for maximum exposure, and (if sued for infringement) maximum potential liability. Here’s a blow-up of the new logo next to Buc-ee’s:
I cannot help but wonder how a jury would view a trademark suit involving this new mark. Again, the jury never provided any explanation for their finding that the alligator mark infringed and blurred the beaver mark. The new mark has three of the five points of similarity Buc-ee’s previously argued made the alligator mark unlawful (no red tongue and yellow background here). The orange background, while a different color, is only a shade away. And the character is still wearing a hat (and now includes a similar color, red, in a stripe). In addition, the color of the cowboy’s hair is similar to the beaver’s brown fur. Both are smiling. Both have at least one eye open. Both have round noses.
Despite their similarities, a critical difference is that Buc-ee’s is a beaver, and the new logo depicts a cowboy–though, I thought an alligator was readily distinguishable from a beaver. The cowboy is also facing the viewer head-on, rather than in profile. Overall, the appearance is quite different, seemingly more than than the alligator. Facially, it would seem strange for consumers to confuse Choke Canyon with Buc-ee’s. So perhaps Choke Canyon is in the clear. What do you think? Is the new cowboy a “colorable imitation” of Buc-ee’s beaver?
