Use of Trademark Phrase Not Slogan Infringement

Interstate Bakeries Corp. v. OneBeacon Ins. Co., 686 F.3d 539 (8th Cir. (Mo.) 2012)

Affirming in a magistrate district, the magistrate court's order, 773 F. Supp. 2d 799 on narrower grounds, the court parted company with the scope of coverage for infringement of a title more broadly defining it as agreeing that it could be Nature's Own if used as a title of the claimant's bread wrappers but finding that there was no evidence to clarify that that's the manner in which they were used because, "[t]he mere appearance of the trademarked phrase on the packaging does not allow us to assume that it is being used as the ‘heading' or ‘distinctive designation' of the wrapper. See Merriam-Webster's at 184, 823." Id. at 545. Similarly, as to infringement of slogan, the court agreed that it could be implicated by the two applicable dictionary definitions: "(1) ‘a word or phrase used to express a characteristic position or stand or a goal to be achieved' and (2) ‘a brief attention-getting phrase used in advertising or promotion.'Merriam-Webster's at 1174[,]" but concluded that the allegations of the claimant's complaint did not suggest that Flowers, the claimant, used the phrase "Nature's Own" to market its products in either of the ways defined in the dictionary.

In a vigorous dissent, Judge Smith disagreed, noting:

without changing the facts alleged in the complaint, Flowers could simply assert separate counts for title and slogan infringement, claiming that "Nature's Own" is a title or a slogan.

Id. at 547.

Observing that the applicable question is,

. . . "Did the original and First Amended petitions state enough to potentially or possibly establish coverage under the policy, thereby triggering [OneBeacon's] duty to defend?" Truck Ins. Exchange v. Prairie Framing, LLC, 162 S.W.3d 64, 83 (Mo.Ct.App.2005). "Missouri law suggests that as long as the petition demonstrates the potential or possible statement of a claim within insurance coverage, even if inartfully drafted, it triggers the insurer's duty to defend."

Id. at 547.