If you watched the Super Bowl last February, you may remember the gritty two-minute commercial produced by the Chrysler automobile company featuring rap superstar Eminem driving a brand new Chrysler 200 through the streets of Detroit. With Eminem’s huge hit “Lose Yourself” playing in the background, the narrator basically talks about how the Motor City is back after suffering many years of declining sales, factory closures, and job losses due to strong competition from foreign auto manufacturers. At the end of the commercial, the tagline IMPORTED FROM DETROIT is placed prominently above the Chrysler name and logo. The multimillion dollar spot (which was likely partially paid for with your tax dollars thanks to the federal auto bailout) was well-received by the American public and was widely praised in the media as being one of the best commercials during the Super Bowl. Although I’m no Eminem or Chrysler fan, I have to admit that the advertisement was very effective, and I must not be the only one seeing that Chrysler now has a website dedicated to the IMPORTED FROM DETROIT tagline, on which it advertises its vehicles and sells a wide range of merchandise and novelties bearing the mark.
Approximately four months before the Super Bowl commercial aired, Chrysler filed an intent-to-use trademark application for IMPORTED FROM DETROIT for “motor vehicles, namely passenger automobiles, their structural parts, trim and badges.” A couple of months later, Chrysler filed another trademark application for IMPORTED FROM DETROIT to cover a variety of items, including clothing, jewelry, and luggage. Then, just two days after the Super Bowl, Chrysler filed a third trademark application for the same mark to cover other products, such as key chains, license plates, posters, bumper stickers, sports equipment, and toy vehicles. Clearly, Chrysler knew it was going to make a substantial investment in the IMPORTED FROM DETROIT mark and had some confidence that the trademark would resonate with American car buyers.
Less than two weeks after Chrysler introduced its IMPORTED FROM DETROIT trademark to the American public, a company by the name of Moda Group (which does business under the name “Pure Detroit”) started selling t-shirts boldly displaying the IMPORTED FROM DETROIT mark in its stores and on its website. My research indicates that Moda Group is basically a retailer of clothing, apparel, and gift items that represent and promote the city of Detroit. When it first released its t-shirts, Moda Group unabashedly advertised them as featuring “the tagline that is making headlines across America!” Of course, when Chrysler became aware of the unauthorized use of IMPORTED FROM DETROIT, it sent Moda Group a cease and desist notice demanding that it immediately stop selling the t-shirts. When Moda Group failed to comply, Chrysler sued Moda Group in a Michigan federal court last March alleging trademark infringement and unfair competition.
In response to the lawsuit, Moda Group counterclaimed that Chrysler did not have a legally enforceable or protectable trademark because IMPORTED FROM DETROIT is either (1) primarily geographically descriptive or (2) geographically deceptively misdescriptive. In other words, Moda Group was claiming that IMPORTED FROM DETROIT merely informs the public that Chrysler’s products emanate from Detroit or, in the alternative, misleads the public into believing that Chrysler’s products come from Detroit when they do not (Chrysler’s headquarters are actually located about 30 miles outside of Detroit and none of its factories are located in the Detroit city limits). Geographically descriptive marks are generally not protectable or eligible for registration on the Principal Register without a showing of acquired distinctiveness. Geographically deceptively misdescriptive trademarks are not entitled to federal registration under any circumstances. I note, however, that geographically deceptively misdescriptive marks may still receive protection under state common law even though they are ineligible for federal registration.
As part of the lawsuit, Chrysler filed a motion for a preliminary injunction, which is basically a request for the court to order Moda Group to cease using IMPORTED FROM DETROIT while the case is pending final determination. After the parties fully briefed and argued the motion, the court ruled that Chrysler was not entitled to a preliminary injunction because it failed to show irreparable harm and likelihood of success on the merits of the case. Although it’s not unusual to have preliminary injunctions denied in trademark infringement cases due to the plaintiff’s extraordinarily high burden of proof, what is astonishing is that the court found IMPORTED FROM DETROIT to be primarily geographically descriptive of Chrysler’s products and that the trademark had not acquired distinctiveness in the minds of consumers.
I believe the court was completely incorrect in its assessment of Chrysler’s trademark. From the perspective of an American consumer located anywhere in the United States, IMPORTED FROM DETROIT cannot be primarily geographically descriptive because Chrysler’s cars and other products are not actually “imported” from anywhere. The word “import” means “to bring in from a foreign country.” Last time I checked, Detroit is not a foreign country (although if Canada really wanted Detroit perhaps we could strike a deal). There is no question in my mind that IMPORTED FROM DETROIT is a clever play on the belief held by many Americans that foreign “imported” cars are of a higher quality and more desirable than those manufactured in the U.S. But even if the mark could be considered geographically descriptive, I think IMPORTED FROM DETROIT had acquired the requisite secondary meaning in the minds of consumers in the short time between the airing of the commercial and Moda Group’s blatant rip-off of Chrysler’s tagline. The fact of the matter is that tens of millions of Americans quickly became familiar with Chrysler’s trademark and Moda Group saw an opportunity to exploit such recognition and subsequent publicity of Chrysler’s intellectual property for its own financial gain. It’s theft, pure and simple. And the court decided to reward Moda Group for its sleazy business practices rather than put the hammer down on them. But, I am hopeful that a jury will eventually have the opportunity to hear the case and will provide Chrysler with the justice it deserves.