The Virginia Business Litigation Blog
Pincher’s Crab Shack, a restaurant chain with seven locations in Southwest Florida, is taking on fast-food giant Wendy’s in a trademark lawsuit. In a case filed in federal court on July 12, 2011, Pincher’s asserts that Wendy’s has stolen its trademarked slogan, “You Can’t Fake Fresh,” and used it in its advertising on television, radio, and the Internet. Wendy’s actions “are likely to cause public confusion, mistake, or deception, and constitute trademark infringement,” Pincher’s attorneys wrote in their complaint, which alleges infringement, unfair competition, and false statements of origin under both federal and Florida law. Pincher’s is seeking more than $2 million in damages.
“Defendants have openly and actively engaged in the unauthorized, infringing, unlicensed, and imitative use of the exact same trademark registered exclusively to Plaintiff, namely YOU CAN’T FAKE FRESH for the exact same services protected in Plaintiff’s federal registration, namely ‘restaurant services,’ in the exact same geographic area in which Plaintiff uses its Mark, in commercial advertising and in exact and direct competition with Plaintiff,” wrote Pincher’s attorney Jennifer Whitelaw of Naples, Fla., in the complaint. Whitelaw was also quoted in the press as saying, “It’s a great trademark. Our client worked hard to create it and our legal team worked hard to protect it and to successfully register it. From there, apparently it caught the eye of another suitor. Admiring our client’s mark is understandable, but this is a bit more admiration than what the law allows.”
Slogans are protectable under federal trademark law, provided they are used in such a way as to identify and distinguish the trademark owner’s goods and services from those of others. Because the touchstone for liability in any trademark action is the 
likelihood of confusion, however, trademark infringement does not necessarily occur where slogans serve a subsidiary role to a service provider’s “main” trademark. In other words, if “You Can’t Fake Fresh” is always preceded in advertising by either “Pincher’s Crab Shack” or “Wendy’s,” it may be difficult to prove consumer confusion.
But Pincher’s also seeks to recover for trademark dilution, which does not require proof of actual (or even likely) confusion. The lawsuit claims that the association of the slogan with Wendy’s products, since they are not the “genuine article” of Pincher’s and may be inferior to Pincher’s food, will “continue to damage and dilute the goodwill” that Pincher’s has developed regarding its food.