A PEDAL TAVERN by Any Other Name Would Still Be as Annoying
On my way back to Nashville (from Los Angeles) last week, I found myself in the back of the plane with not one, but two bachelorette parties. It wasn’t quite noon (Pacific time), but several of the members were already pretty drunk, and they all had a grand time. You might assume that I was just really unlucky, but when you consider how many bachelorette parties there are at any one time in Nashville, and that almost all have to fly into Nashville, you’d conclude that it was amazing I hadn’t encountered two on the same plane before.
Now, I don’t want to say anything bad or dismissive about bachelorette parties, even though we all find them a trifle annoying. They constitute 16.67% of the overall Nashville economy1 and give rise to about 20% of all civil lawsuits here2, so it’s sort of important that we bite our tongues and tolerate them. Without them, the local AirBNB market would collapse, which would hurt the market for tearing down old homes and replacing them with two-towers-on-a-single-lot. Bars and honky-tonks would be hurt, and several of them would probably go out of business. And 12South would revert to whatever it was before3 Even Reece Witherspoon’s and Holly Williams’ shops would probably have to close.4
But no Nashville industry would be hurt worse than pedal taverns. Er, I should rephrase that: what I’ve always called “pedal taverns.” If you’ve never seen one5, it might be hard to describe them to you. Here’s a picture of one:
The idea is that about twelve people sit around the table, which has beer taps in easy reach, while they propel the vehicle down the street, very slowly. They are allowed on the street (except during rush hour), and everyone fears getting stuck behind one. They’re loud because they’re basically outdoor bars that move around.
A Very Nashville Lawsuit
I, and everyone I know, has always called them “pedal taverns.” But, because of a recent lawsuit filed here—described by The Tennesseean as “perhaps the most Nashville lawsuit ever”—I have learned that Nashville Pedal Tavern has a registered trademark in the term. Not only that, but Nashville Pedal Tavern is extremely annoyed that a local competitor, Sprocket Tours, has been describing its beer-and-pedal contraptions as “pedal taverns” and wouldn’t stop when asked nicely to.
But, dangit, what do I call them? Pedal pubs? Mobile bars? Bars-on-wheels? Bicycle bars? Beer bikes? Grumble.6
Returning to the lawsuit, Nashville Pedal Tavern objects to Sprocket Tours’ use of “Nashville’s #1 Party Bike Pedal Tavern” in the “title” of its website7. For the most part, you don’t notice a webpages’s title. It’s not part of the webpage’s content on display, but your browser will probably display it somewhere above the displayed webpage. These days, it’s usually displayed in the “tab bar” part of your browser, and if you have a lot of browser tabs open, the title is likely to be truncated to a word or two.
Hipsters Only Use Organic Search Results
That, by itself, wouldn’t be worth suing over, but webpage titles are important for two other reasons. First, it’s what search engines display when showing a webpage in its results. Thus, when you searched for “pedal tavern Nashville” or “Nashville pedal beer,” you’d see Sprocket Tours’ page listed as “Nashville’s #1 Party Bike Pedal Tavern Tour.” To Nashville Pedal Tavern, this would confuse a potential customer into clicking on Sprocket Tours’ link rather than a genuine Nashville Pedal Tavern link.
Second, it is widely believed that keywords in a webpage title has an outsized effect on search engines’ ranking algorithms. Although the algorithms are closely-guarded secrets, there professionals who make it their business to make educated guesses at how the algorithms weight certain information. If you can increase your website’s ranking with just a few choice keywords in the webpages’ titles, you’d be a fool not to try.8 To Nashville Pedal Tavern, Sprocket Tours is getting an unfair leg up by using PEDAL TAVERN in the title to boost search-engine rankings.
But, wait, why was anyone typing “Nashville pedal tavern” into a search engine in the first place? Were they really looking specifically for Nashville Pedal Tavern? Maybe, but probably not. Like me, they think “pedal tavern” is what you call the pedal-and-beer contraption. No one in Nashville ever says, “Damn those pedal-powered beer-dispensing, menace-to-traffic contraptions!” We say, “DAMN THOSE PEDAL TAVERNS!” Regardless of whose pedal-powered, beer-dispensing, menace-to-traffic contraptions they are.
Are You Suggesting My Descriptive Mark Is Generic? How Fanciful and Arbitrary!
So it’s generic, right? That is, it’s a term for the category of things itself. And just as you can never have APPLE brand apples9, you can’t have PEDAL TAVERN brand pedal taverns, right? But not so fast. Where did we Nashvilleans get the idea to call the pedal-powered, beer-dispensing, menace-to-traffic contraptions “pedal taverns” in the first place? From Nashville Pedal Tavern. Where else?
I’ve blocked out the memory, of course, but a little research shows that Nashville Pedal Tavern has been calling their horrible contraptions PEDAL TAVERNS since 2010. Further, for a long time, they were the only pedal-powered, beer-dispensing, menace-to-traffic contraptions in town. So we came to call them “pedal taverns” because that was the only brand for them, and since there wasn’t a pre-existing term for them, what else were we going to call them?
It would be odd to punish a company that has successfully coined a new mark, was first to market and so successfully marketed it that it became synonymous with a product the company introduced to the market. The reason we don’t let generic terms function as trademarks is that doing so would rob our language of words. If there were APPLE brand apples, then no one could market apples without infringing, because there’s no other practical way to describe what it is that’s being marketed. But that’s not what’s happening with PEDAL TAVERN at all. The term was coined as a trademark, so we aren’t having our language robbed. We just don’t know what else to call the infernal contraptions.
But saying PEDAL TAVERN probably isn’t generic is only to say that it might potentially be a valid trademark. The mark must still be distinctive, i.e., capable of bringing to consumers’ minds certain (vaguely defined) qualities of a certain set of products.10 In striking the balance between giving consumers a quick-and-easy way to identify the qualities (using that word in both senses11 and letting us all use ordinary words in their ordinary (and not-so-ordinary) ways, trademark law places restrictions on potential trademarks that describe the product’s qualities. Easy examples of such potential trademarks are SPEEDY DELIVERY, NASHVILLE HOT CHICKEN12 and POWER COMPUTERS. More difficult examples might be COACH (for educational materials), LOTSA SUDS (for dish washing liquid) and ROCKTOBER (for a music festival in October).13
If your mark is descriptive, then you bear the burden of showing that, through your exclusive use of the mark, consumers really have come to associate your products with the mark. This often (but not always) is difficult to prove, and usually (but not always) requires a well-conducted consumer survey.
Just on the other side of descriptive marks are “suggestive” marks. These are usually defined as mark that only indirectly describe the product but in a way that requires a “mental leap.” The classic example of a suggestive mark is GREYHOUND for a bus line. Greyhounds are fast, so GREYHOUND suggests speed. Other examples include GLASS DOCTOR (for glass repair), HEARTWISE (for healthy food) and ROACH MOTEL (for cockroach traps). Suggestive marks don’t need any proof that consumers really have come to associate the mark with the product. They’re regarded as inherently distinctive. That’s a huge advantage.
It’ll come as no surprise to you that the line between “descriptive” and “suggestive” can be pretty zen. Courts have, for example, split over the same mark: 5-HOUR ENERGY (for a kind of “energy drink”) has been found both as descriptive and suggestive by different courts. You can see why. Is it just describing how long the “energy” lasts? Or is it making a comparison to a battery?.14
Is PEDAL TAVERN merely descriptive of a pedal-powered covered vehicle that dispenses beer? Or do you need to make a mental leap? I’ll let you decide. I’ll note in passing, however, that when Nashville Pedal Tavern applied to register PEDAL TAVERN with the USPTO, the USPTO didn’t reject the application on descriptiveness grounds.15
You Think Your Mark Is Valid? How Presumptuous!
Let’s talk about that trademark registration for a minute, because it’s important. Here’s why: registration means the trademark is presumed valid in lawsuits. This is one of several benefits of registration. So, if there is any question about whether PEDAL TAVERN is merely descriptive, the burden of proving that shifts from Nashville Pedal Tavern to Sprocket Tours. If Sprocket Tours wants to make an issue of it, it’ll have to prove (1) PEDAL TAVERN is descriptive (and not suggestive) and (2) consumers do not otherwise associate PEDAL TAVERN with traffic-snarling, beer-dispensing, aerobic, loud tour services. Nashville Pedal Tavern’s uphill climb just became Sprocket Tours’.
What’s more, let’s say your mark really is descriptive, but you feel you have pretty good evidence that consumers associate it with your services. It is much easier to prove that in the course of applying for the registration than it is in litigation. Registration allows you to resolve that issue in advance of having it tested in the rigors of litigation. To be clear, registration isn’t absolute proof against invalidity, but it makes invalidating your trademark a lot less likely.
One final thought: If you want a descriptive mark to become a valid mark, you must use the mark a lot. But lots of use benefits all trademarks, not just descriptive ones, because it also goes to the trademark’s strength, which is one of the most important factors in determining infringement. In a way, stronger marks get a broader scope in what counts as similar to your mark and in what counts as similar to your mark’s associated products.
In the meantime, it appears Sprocket Tours has ceased using PEDAL TAVERN. We’ll see if that’s enough for Nashville Pedal Tavern, or if Nashville Pedal Tavern wants damages. Proving damages will be interesting…
Now We Dance!
One final, final thought: Since I’m of a certain age, I can’t write about something called Sprockets without thinking about this the whole time. Hopefully, you are either too old or too young for that.
Thanks for reading!