On the July 26th episode of Last Week Tonight, John Oliver issued a challenge to Buc-ee’s, the gas station and convenience store chain, to sue the HBO show’s latest branded merchandise collection, which bears a striking resemblance to Buc-ee’s logo.
“Buc-Off,” the limited-edition parody merch line, features Mr. Nutterbutter, a squirrel mascot that previously appeared on the show, in a logo incorporating characteristics Buc-ee’s has objected to in trademark infringement lawsuits against small businesses: a smiling cartoon animal facing right, a red tongue, a black circle and a yellow background.
The “Buc-Off” logo is emblazoned across T-shirts, pajama pants, boxer briefs, socks, headwear, drinkware, umbrellas, stickers and even onesies. The webstore is managed by Nadel, PPAI 100’s No. 12 distributor. Nadel declined to comment to PPAI Media at this time.
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The 20oz Traveler Tumbler listed on the website is provided by Gordon Sinclair, PPAI 100’s No. 31 supplier.
Mark Gardyn, vice president at Gordon Sinclair, suggests the story speaks to the power of branded merchandise. “A logo on a product is never just a logo,” Gardyn tells PPAI Media. “It creates loyalty, sparks emotion, starts conversations and can even become part of cultural moments.”
- All proceeds from the parody merch collection, which is available until September 8, go to nonprofit Hunger Free America.
What Caused All This?
Headquartered in Texas, Buc-ee’s is in Oliver’s crosshairs after successfully suing more than a dozen companies with cartoon animal mascots over trademark infringement. This year, the southern institution with a cult-like following has filed lawsuits against Mickey’s, an Ohio-based gas station chain, and Georgia-based convenience store Teddy’s Market for alleged trademark violations based on their logos.
Although both cases are still open, Oliver mentioned that most companies opt to settle and redesign their logos or just fold completely. “And that’s probably because most just don’t have the resources to fight a company this big,” said Oliver, adding that Buc-ee’s should be careful because, quoting a legal expert, “The more you do this, the more you might run into somebody who has the means or the will to fight with you about it.”
Mark Gardyn
VP, Gordon Sinclair
It appears that the beaver isn’t taking the bait. Buc-ee’s General Counsel Jeff Nadalo told The Dallas Morning News the company doesn’t plan to sue but declined further comment.
“It would be a bad look for Buc-ee’s,” Oliver told The Hollywood Reporter on Friday. “I was mostly confident that they would not do it, but some companies do feel drawn to a bad look, like a moth to flame.”
While the optics wouldn’t be good for Buc-ee’s, a lawsuit may still have merit. In the context of parody merchandise, the question becomes whether the merch is entitled to the protections afforded to trademark parodies, according to Michael Cannata, partner in Rivkin Radler’s Insurance Coverage and Intellectual Property Practice Groups.
Michael Cannata
Partner, Rivkin Radler
“Navigating the complexities of trademark parody is a delicate ballet that requires incorporating enough of the brand owner’s trademark so that consumers understand the reference while doing so in a way that consumers would perceive as a humorous or satirical commentary on the brand without suggesting an actual association with, or otherwise diluting, the brand,” Cannata tells PPAI Media.
It’s important to note that if Buc-ee’s decided to pursue legal action, suppliers, distributors or e-commerce managers can potentially be liable for their role in the sale of infringing merchandise, adds Frank Misiti, another partner in Rivkin Radler’s Insurance Coverage and Intellectual Property Practice Groups.
“To that end, liability can attach to a third party provided there is a finding of infringement in the first instance,” Misiti says. “Assuming that the merchandise is considered infringing and not a parody, such third parties may be found liable if they continued to provide the infringing product knowing that it was infringing or had a relationship with the alleged infringer and exercised control over the infringing product.
Frank Misiti
Partner, Rivkin Radler
“Of course, any liability determination is a fact-sensitive analysis and often includes consideration of pre-existing indemnification agreements, which protect third parties from these types of claims.”
Donating sales of parody merchandise to charity won’t nullify a lawsuit, but it does improve the optics, Cannata says. “That charitable mindset will be an important consideration, as it may support the point that the trademark parody is being used primarily for humorous or satirical commentary as opposed to financial gain.”
