A defendant can only be liable for trademark infringement if a third party’s owned trademark registration is used in a trademark way. Stated in another way, the defendant’s use needs to be one where the mark is identifying the source of the good or service. The creator of a well-known chocolate nut pie learned that the hard way at the district court level and now once again on appeal.
Alan Rupp created the Derby Pie and registered a trademark for the dessert with the U.S. Patent and Trademark Office. In May 2017, the Louisville-based Courier-Journal published an article titled, “Bourbon makes this Derby pie a state original,” and Rupp was really upset by it. He was so disgruntled that he issued a letter to the newspaper highlighting his claim that this was an instance of infringement.
The Courier-Journal ignored Rupp and decided to, over a month later, publish another article that referred to a Derby Pie. This time, the reference was made to a type of macaron from a company called Derby City Macarons.
Finally fed up with it all, Rupp filed suit and the district court dismissed all his counts with prejudice. The court made the determination that Rupp failed to plausibly establish that his Derby Pie mark was used in any way other than a non-trademark use. Thus, there could be no risk of consumer confusion, which is what an infringement action is premised on proving.
The court found that one article, a biographical piece concerning a Louisville baker who makes macarons with different flavors, including a Derby Pie variation, was merely part of an in-depth purview of a small business owner. The use of Derby Pie was to indicate the flavor, not the source of the goods. Furthermore, the article makes it clear that the Derby Pie macaron was created by an independent baker and not Rupp.
The other article was found to have properly made the distinction between a recipe for a Derby pie as opposed to the recipe for the Derby Pie. It was describing a type of pie as opposed to the pie created by Rupp. Here again, the publication identified the source of the product so as to create no confusion with Rupp’s creation.
As stated by the court,
In sum, because (1) the Courier-Journal identified the specific sources of the pie recipe and macaron in its articles; (2) these products are “sufficiently different” from products designated by
DERBY-PIE®, meaning there could be no risk of misassociation between the independent baker/Captain’s Quarters and Rupp/Kern’s Kitchen; and (3) the Courier-Journal has used the phrase “Derby pie” in a “wholly descriptive manner[,]” we can assuredly say that the CourierJournal did not use “Derby pie” in a trademark way.
This is an important holding for many trademark registration holders to recognize. Just because someone else uses a registered trademark in some form does not always amount to the creation of a legitimate cause of action for trademark infringement or false designation of origin. The plaintiff will still need to show that the complained of use was actually a trademark use where a consumer is likely to be confused as to the source of a good or service. With Derby Pie, Rupp could not satisfy such a burden.