The Notorious Lizzie Borden Ax Murders
Lizzie Borden took an axe
and gave her mother forty whacks.
When she saw what she had done,
she gave her father forty-one.
— Anonymous
And so begins our trademark tale at the site of the 1892 notorious ax murders of Andrew and Abby Borden in Fall River, Massachusetts. Lizzie Borden, Andrew Borden’s daughter, was accused of murdering her father and stepmother, a crime for which she was later acquitted. But the story has lived on in folklore and draws crowds of tourists eager to “enjoy” the Fall River site of the ghoulish double ax murder.
Ghost Adventures and the Trademark Dispute
Upon this background, our trademark dispute begins. It involves two parties. The plaintiff, U.S. Ghost Adventures, LLC, runs ghost tours and owns a bed and breakfast operating out of the Lizzie Borden house in Fall River. Ghost Adventures owns a federal trademark registration for LIZZIE BORDEN and an “axe” logo, which identifies hotel and restaurant services. Here’s the logo:
Miss Lizzie’s Coffee: A Haunted Rival?
The defendant, Miss Lizzie’s Coffee, LLC, operates a coffee shop adjacent to the Lizzie Borden House. Outdoor signs adorn the coffee shop with displays of a “stylized hatchet spewing blood” and signs that advertise the establishment as “Miss Lizzie’s Coffee” and “The Most Haunted Coffee Shop in the World!” Here’s Miss Lizzie’s storefront:
The Trademark Infringement Lawsuit
According to Ghost Adventures, tourists assumed that the Lizzie Borden house was related or affiliated with Miss Lizzie’s and were surprised to learn that they couldn’t bring Miss Lizzie’s coffee on their tours of the house. Other alleged instances of confusion were documented by Ghost Adventures.
In September 2023, Ghost Adventures sued Miss Lizzie’s for trademark infringement and unfair competition and moved for a temporary restraining order based on trademark infringement.
Consumer Confusion or Just Proximity?
The District Court axed the motion for injunctive relief on grounds that it was unlikely that Ghost Adventures would succeed on the merits of its infringement claim. The court explained that “Ghost Adventures must demonstrate that Miss Lizzie’s ‘used an imitation of its protected mark in commerce in a way that it is likely to cause confusion, or to cause mistake, or to deceive.'”
But upon comparison of the trademarks, Ghost Adventures’ hatchet mark in no way resembled the hatchets used in Miss Lizzie’s signage. Moreover, according to the court, Miss Lizzie’s Mark associated its business with the historical story of Lizzie Borden, not the mark used by Ghost Adventures.
Why the Court Rejected the Trademark Claims
Ghost Adventures’ attempted to prove that its mark had acquired secondary meaning. That is, when a descriptive term has, over time, come to be uniquely associated in the minds of the public with a particular source of goods or services. According to the court, Ghost Adventures failed to demonstrate secondary meaning. Of course, it did not help that Ms. Lizzie’s had posted a disclaimer on its window that its business had no relationship to the Lizzie Borden house. Motion denied.
Lessons in Trademark Law from Lizzie Borden
Ghost Adventures appealed to the United States Court of Appeals for the First Circuit, which was no less tolerant of Ghost Adventures’ arguments. The Court of Appeals held that the District Court was spot on when it found that “the only similarity between hatchet logos [of the two parties] is that they both depict hatchets.” Furthermore, the District Court “found that Miss Lizzie’s reference to “Lizzie” was to the lore of Lizzie Borden–which Ghost Adventures does not own–rather than to the mark “Lizzie Borden.” The Court of Appeals also agreed with the District Court’s conclusion that the parties sell and market different goods and services to different consumers. Ghost Adventures sells to “sophisticated tourists who purchase tickets in advance” whereas Ms. Lizzie sells to passersby “hoping for a caffeine kick or bite to eat.” The court rejected Ghost Adventures’ attempt to view the two businesses through a “wider lens” of “hospitality services.”
What about the actual confusion that Ghost Adventures claims? In perhaps the most interesting aspect of the opinion, the Court of Appeals observes that trademark infringement occurs when consumers are confused by similar trademarks. Merely because confusion may arise between businesses or products does not per se indicate trademark infringement. The lower court found that confusion was engendered not by the similarity of the trademarks but arose from three sources:
[1] both businesses operating in close physical proximity; [2] both trade off the Lizzie Borden story; [3] many customers generally associate services related to a historical site, such as gift shops and cafés, with the nearby historical site itself.”
The Court of Appeals agreed, holding that the source of confusion was not the similarity of the parties’ trademarks, “but something else altogether.” Consumers can draw false parallels between businesses by reason of their physical proximity, line of business, marketing themes and other variables that are distinct from their trademarks. Owning a trademark based on a legend doesn’t confer ownership rights in the legend. Remember that when formulating your marketing plans around an ax murder.
— Adam G. Garson, Esq.
*Originally posted on my PA Trademark Lawyer website.