Yes, possibly the most important lawsuit since the sad case of the hamburger joint sued by the Washington white shoe law firm, playing now at a theater on Connecticut Avenue.
Well, maybe the most important lawsuit in trademark’s hoary world.
“Field of Screams” – Maryland version – is the annual Halloween fundraiser put on by the Olney (Md.) Boys and Girls Community Sports Association. “Field of Screams” – Pennsylvania version – aka Field of Screams LLC, filed suit for trademark infringement in Maryland federal court, claiming exclusive trademark rights to the name, if not in the entire United States at least in the mid-Atlantic region. Our intrepid blogger recently came upon the seminal legal development while perusing the Metro section in the Washington Post. Legal filings in the case can be found through the Federal court system’s PACER service, here.
Pennsylvania’s trademark claim rests on its pre-dating the Maryland spookfest, and claims of consumer confusion as to source – the “likelihood of confusion” test for trademark infringement. Indeed, Pennsylvania horror proprietor Jim Schopf told the Post of numerous instances of tickets purchased through his operation’s website by Halloween revelers thinking they had locked in dates at the Maryland “Field”.
Neither Schopf nor his limited liability company owns a registered trademark for “Field of Screams”, and his trademark claims therefore derive from common law and under provisions of the federal Lanham Act applicable to such common law claims. The existence of a trademark registration would have created a rebuttable presumption of validity for an infringement claim – including overcoming the obstacles of showing distinctiveness of the mark (discussed below).
Both “Fields” are haunted houses, by the way.
While also pointing to its nonprofit purpose in supporting the charitable activities of the Boys and Girls Club, Maryland’s screamers point to the commonality of the name – citing 25 other “Field of Screams” operations throughout the country.
And throwing a direct challenge to Pennsylvania’s right to trademark in the first place, Maryland argues that the name is “a common and generic description for a haunted attraction.” Or, in trademark parlance: “Field of Screams” is merely descriptive and cannot be trademarked.
Why can’t “descriptive” terms be trademarked? To illustrate the point: Some would argue that “Kleenex” long-ago became a generic term for facial tissue. Yet Kimberly Clark still owns valid trademark rights to “Kleenex”. One would be well-advised to tread warily in the peddling of competitive facial tissue, expecting Kimberly Clark to vigorously prevent competing products from using the Kleenex brand. Similarly, as any regular television watcher of NFL football well knows, “Jeep is a registered trademark of …”, continuously re-affirming Chrysler’s exclusive ownership of the trademark.
Descriptive terms cannot be trademarked because trademark would give a single person the exclusive right to use a common term. Just the same, a trademark owner can lose its claim to trademark if that term later becomes descriptive.
What makes a trademark descriptive? In a 1976 case, Abercrombie & Fitch Co. v. Hunting World, Inc., Judge Friendly wrote that a term is descriptive “if it forthwith conveys an immediate idea of the ingredients, qualities, or characteristics of the goods and/or services.” 537 F. 2d 4 (2d Cir. 1976).
A claimant for trademark argues that its name is not descriptive. Or, rather (as Pennsylvania’s claimant did in its Complaint), that its trademark is “inherently distinctive and does not require secondary meaning for legal protection.” A trademark challenger argues that the claimed trademark is merely descriptive and therefore cannot be exclusively locked up by the trademark claimant. Calling a Halloween haunted house “Field of Screams” is, according to the Olney Boys and Girls Club, fairly obvious.
Perhaps, but perhaps not. And that non-obviousness – or non-certainty – seems to be the problem. That same formulation typically cited by Judge Friendly of “merely descriptive” was preceded in the same opinion by a characterization of a trademark being not quite descriptive, but “suggestive”. Unlike a descriptive term, a “suggestive” term can be trademarked:
A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods.
What is suggestive and what is descriptive? That’s a problem. Judge Friendly long ago threw up his hands, and the law has collectively done the same ever since: Quoth Friendly: “It is quite impossible to get any rule out of the cases beyond this: That the validity of the mark ends where suggestion ends and description begins.”
In its legal Complaint, as if to address these obvious weaknesses in its argument, Pennsylvania’s haunted proprietor argues that its “Field of Screams” “is a suggestive mark, and not descriptive, because it does not describe or immediately convey an idea of the type of services and the wide variety of entertainment offered by Plaintiff” – in further support of which, it offers examples of lots of additional attractions, entertainments and amusements accompanying its haunted mansion.
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