By Bryan K. Wheelock, Principal
Bojangles International, LLC — originator of the Cajun Filet Biscuit that it promotes with the jingle “GottaWannaNeedaGettaHava” — has sued Hardees for selling a Cajun Chicken Biscuit and using the phrase GottaWannaNeedaGettaHava to do so.
Hardee’s introduced its Cajun Fillet Biscuit via Twitter, and promptly received a cease and desist letter prompting them to rename their sandwich “Cajun Chicken Biscuit.” This was not enough to appease Bojangles, which brought suit in North Carolina, alleging that Cajun Chicken Biscuit infringes its federally registered Cajun Fillet Biscuit trademark, and that Hardee’s introductory Tweet infringed its federally registered GottaWannaNeedaGettaHava trademark.
It is a curious case because while Hardee’s indisputably used the phrase GottaWannaNeedaGettaHava in its tweet — although not as a brand name but arguably as a comparative reference to Bojangles’ suggesting that its Cajun Fillet Biscuit is “better” — would someone receiving this Tweet from Hardee’s really be confused? Hardee’s started out using the Cajun Fillet Biscuit trademark but quickly switched to Cajun Chicken Biscuit. What would Bojangles expect Hardee’s to call a Cajun flavored chicken biscuit?
The case will test the limits of 15 U.S.C. § 1115(b)(4) defense for uses “otherwise than as a mark … which is descriptive of and used fairly and in good faith only to describe the goods or services.” Hardee’s will likely argue its use “GottaWannaNeedaGettaHava” was a comparative reference to Bojangles, and its use of Cajun Chicken Biscuit is descriptive of its product.
It will be interesting to see if Bojangles can make Hardee’s dance.