Sesame Workshop – the owner of the Sesame Street children’s television show – sued several defendants over the trademark use of the tagline NO SESAME. ALL STREET to promote puppet based movie that by all accounts contains violent and sexually explicit material. Sesame Workshop alleged several claims including trademark infringement and trademark dilution. At the same time, Sesame Workshop moved for a Temporary Restraining Order to prevent the use of the NO SESAME. ALL STREET tagline in the film’s promotional materials. Yesterday, the United States District Court for the Southern District of New York denied Sesame Workshop’s application for a Temporary Restraining Order.
Despite the denial of the Temporary Restraining Order, the case is far from over. Yet if you search the Internet for an article about the case you would think it is over by the headlines. In denying the TRO, it was reported that Judge Vernon Broderick agreed with the defendants that the mark NO SESAME. ALL STREET conveyed that the movie was not associated with the children’s television show; thus, unlikely to cause confusion. The reality is that it does not matter what Judge Vernon Broderick thinks about the tagline because Sesame Workshop demanded a jury trial. Therefore, a jury not Judge Vernon Broderick will decide whether the tagline is too close to the Sesame Street mark, which has been used in connection with a children’s television show for almost 50 years.
Temporary Restraining Orders are difficult to obtain in trademark cases because you need to show that the public interest weighs in favor of issuing the Temporary Retraining Order. The risk the defendants’ run now is creating a pot of damages that Sesame Workshop may be able to recover. And if they keep using a puppet to talk to the media, they may also make it easier for the jury to award attorneys’ fees to Sesame Workshop under the more liberal Octane Fitness standard.
What can we learn from this case as trademark searchers? Probably the most important thing to pay attention to is who the party is that owns a potentially conflicting mark. In this case, Sesame Workshop owns 17 federal trademark registrations for or including the SESAME STREET mark that cover a variety of goods and services. A dispute over the tagline was almost a certainty even if the jury sides with Judge Vernon Broderick. And while the victory may be nice, most clients do not forget who put them in the position to begin with. Add value to a trademark search by identifying potentially litigious trademark owners.