This week at the Trademark Office, Warner Brothers opposed an Arizona company’s attempt to register the “RoadRunner” mark for use in swim therapy products.
In June 2017, RoadRunner Supplies, an Arizona based company, applied for the ROADRUNNER in association wit towel racks and high-density pool noodles that can be found on Amazon. The company claimed that it has been using the RoadRunner name since at least April 2012, but does that mean that it’s entitled to use of the ROAD RUNNER mark?
Warner Brothers doesn’t think so. Warner Brothers filed a Notice of Opposition to the registration of the mark, citing its various registrations for the ROADRUNNER trademark. According to the registrations, Warner Brothers uses the ROAD RUNNER trademark in toys, books, comic books, clothes, and more.
For those who don’t know who Road Runner is, you’re in luck! Warner Brother’s provided a legal definition of Road Runner in its opposition:
“Opposer’s Road Runner character is a fast-running ground bird. The Road Runner is always shown being chased by Wile E. Coyote, who desires to catch and eat the Road Runner. However, Wile E. Coyote is never successful in his pursuit of the Road Runner. Each story shows Wile E. Coyote devising a new trap to ensnare the Road Runner, but the trap, instead of capturing the Road Runner, ends up injuring Wile E. Coyote.”
You may be surprised to find that Warner Brothers not only owns the ROAD RUNNER mark in regard to clothing and toys, but also owns the ROAD RUNNER mark in the realm of “chemical preparations for melting snow and ice; chemical preparations as additives to concrete and asphalt.” Essentially, Warner Brothers has licensed the ROAD RUNNER mark for use on ice melt manufactured by Scotwood Industries. While it seems somewhat random, perhaps it’s good for giving Wile E. Coyote some traction?
Interestingly, the Arizona RoadRunner company actually sells the Road Runner ice melt in its Amazon store. This could certainly make things a confusing to consumers who happen to find the product there, as it appears that RoadRunner is the one that manufactures the ice melt when that is not the case.
Fortunately, we’re dealing with pool noodles here – not ice melt.
There is no question that the marks ROAD RUNNER and ROADRUNNER are similar in sight, sound, and commercial impression. The space in between the words “Road” and “Runner” doesn’t matter.
While it’s possible that Warner Brothers will never license the “Road Runner” mark in the realm of pool noodles, it does specifically have the right to use the mark in swimwear and sporting goods. Warner Brothers noted in its opposition that cartoon characters such as Road Runner have “generated a robust licensing business in virtually limitless categories of goods and services.” If Warner Brothers extended use of the “Road Runner” mark to ice melt, what’s to stop it from extending the mark to pool noodles later on?
Additionally, Warner Brothers notes in its opposition that the ROAD RUNNER mark has developed secondary meaning. This means that when people see the name “Road Runner” on goods, they naturally associate the mark and the underlying product with Warner Brothers.
Simply put: because of the similarity between the marks and the array of goods distributed under the famous “Road Runner” mark, the Arizona company’s use of “RoadRunner” in pool noodles is going to cause consumer confusion as to whether Warner Brothers is associated with or endorsing the product. Because of this confusion, RoadRunner could wrongly benefit from strength and goodwill of Warner Brothers name.
What do you think? Is “Road Runner” now just a generic term like elevator, or does it automatically make you recall the wacky little bird from Sunday cartoons? What about the fact that the roadrunner is an actual species of bird found in the southwestern United States, or that there’s an unopposed registration for RoadRunner in the realm of waste management consultation services?
I think Warner Brothers has a pretty solid case here, considering the famous nature of the ROAD RUNNER mark and its immediate association to that unstoppable bird. Additionally, the realm of pool noodles is dangerously close to toys, even if the intended purpose of the pool noodles is physical therapy. It seems as if Warner Brothers is open to licensing opportunities – any takers?
Author, Caroline Womack. Caroline is a 2L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.