Punny People, Beware! “Lettuce Turnip The Beet” Denied Full Trademark Protection

Apparently, Alfred Hitchcock said that “puns are the highest form of literature.” I couldn’t agree more. The internet is plastered with a wide ranging amount of puns on your favorite merchandise. In fact, many artists make a living by designing works that incorporate some of the best puns. Those artists and creators should take note of a recent ruling out of the 9th Circuit Court of Appeals (Alaska, Arizona, California, Hawaii, Idaho, Montana, Nevada, Oregon, and Washington) that limits a trademark owner’s rights to their registered, punny trademark.

The owner of the registered trademark “Lettuce Turnip The Beet,” used the mark in connection with clothing/t-shirts, among other related goods and services. The owner brought an action against Redbubble, claiming they were infringing on its trademark by selling similar goods bearing the same text and design, as well as claims for counterfeiting, and contributory infringement. The court did not agree with the owner of the trademark.

Even though the owner has valid and registered trademarks, the appeals court concluded that the “marks do not function as trademarks because they are aesthetic only and do not identify the source of the goods. The allegedly infringing activity does not deceive or mislead consumers about the source of the goods but copies the designs themselves.”

The Court discussed why consumers purchase a product bearing “Lettuce Turnip The Beet.” In this case, they are not buying the t-shirt because it identifies the source of the t-shirt, but rather because they find the t-shirt humorous or aesthetically pleasing. Contrast this with clothing bearing any high-end fashion brand. People buy those clothing items because of the brand associated with the clothing, or in other words, because of the source of the goods.

This is an important lesson for anyone who develops my next favorite pun. You may be able to register your mark, but you may not able to prevent others from using the text or design of your mark.