August 30, 2020

Goodwill Hunting

Hot N’ Sweet Concepts, LLC sued Nextbite Brands, LLC, in the Western District of Oklahoma for infringing its MOTHER CLUCKER trademark. In addition to the inexplicable popularity of MOTHER CLUCKER as a name for a restaurant, this case potentially has another important lesson for trademark practitioners.

Among other things, Hot N’ Sweet Concepts is asserting a U.S. Reg. No. 5,288,452 on MOTHER CLUCKERS that Hot N’s Sweet acquired from Pass Restaurant Group, LLC after Hot N’ Sweet opened for business. The assignment states that the assignment came with the goodwill:

The question is, “did the goodwill in fact pass?” First, the Missouri entity uses MOTHER CLUCKER, while the Mississippi entity used MOTHER CLUCKERS. Second, the logos of the two restaurants are quite different. The Missouri logo is on the left, the Mississippi logo on the right:

Third, the menus of the two restaurants are different:

The appearance of the restaurants are different:

Finally, being 809 miles apart, it seems unlikely that there is any overlap in customers. So while the assignment said that the goodwill passed with the registration, will MOTHER CLUCKER be able to show that it actually did?

Goodwill is more than a magic incantation to recite when transferring the mark, there must be some basis to conclude that the meaning of the mark to consumers also passed with the assignment. It’s one thing to acquire a potentially blocking mark to remove it as an obstancle, but quite another to try to enforce it.