Viacom claims victory in Spongebob Squarepants TM spat

A US district court judge has ruled in favour of media network Viacom International, the owner of Nickelodeon, in a trademark dispute concerning cartoon “Spongebob Squarepants”.

Judge Gray Miller, of the US District Court for the Southern District of Texas, Eastern Division, announced his decision on Wednesday, January 11.

Viacom brought nine claims of trademark infringement against the defendant, US company IJR Capital Investments, in January last year. The trademark in question is ‘The Krusty Krab’.

The media business argued that IJR falsely designated origin, competed unfairly, and diluted its marks under Texas common law and the Lanham Act.

Viacom also said that IJR’s proposed restaurant, called The Krusty Krab, which has the same name and spelling of a fictional restaurant in the “ Spongebob Squarepants” series, infringed its trademark.

While Viacom does not own a trademark for the term ‘The Krusty Krab’, the company argued that it has used it continuously since 1999, when the name was featured in the 166th episode of the cartoon.

The company also said that it had acquired distinctiveness in ‘The Krusty Krab’ mark.

In December 2014, IJR filed a trademark application for the term ‘The Krusty Krab’, under restaurant services.

Before filing its suit, Viacom had sent a cease-and-desist letter to IJR in November 2015, when it requested that IJR change the name of its restaurant, stop using any of the Spongebob marks and withdraw its pending trademark application.

IJR responded to the letter, stating that it “rejects Viacom’s claim of likelihood of consumer confusion and respectfully declines to cease use”. Viacom has asked for a summary judgment on eight of nine claims.

Miller ruled that Viacom has acquired secondary meaning of ‘The Krusty Krab’ mark because of evidence relating to 11 seasons of the series and episodes referring to The Krusty Krab.

He also said that the mark would probably cause consumer confusion, and ruled that IJR infringed ‘The Krusty Krab’ mark.

Miller granted in part Viacom’s summary judgment for trademark infringement, but denied claims regarding dilution, false designation, unfair competition and refusal of registration claims.

“Spongebob Squarepants”, an animated series that first aired in 1999, chronicles the adventures of the title character and his friends in the fictional underwater city, Bikini Bottom.

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