Trademark or Title? The Difference Can Affect Duty to Defend

By Robyn Hagan Cain on August 02, 2012 | Last updated on March 21, 2019

What's in a name?

That which we call a "trademark" will not -- in the Eighth Circuit Court of Appeals -- be automatically deemed a "title or slogan."

When we're talking about an insurer's duty to defend, the distinction is critical.

Flowers Bakeries Brands produces and markets fresh breads and buns under the Nature's Own trademark. Flowers says that the Nature's Own mark has "significant fame and public recognition," "tremendous power as a source identifier," "commercial magnetism and good will," and "positive associations and prestigious connotations."

Perhaps Interstate Bakeries Corporation (IBC) wanted a piece of the "commercial magnetism," because Flowers alleges that IBC "is using or preparing to use, or has stated an intent to use and otherwise promoted, the Nature's Pride and Nature's Choice trademarks in connection with packaged breads." Both marks are confusingly similar to Flowers' Nature's Own trademark.

Flowers sued IBC, asserting federal trademark infringement, federal unfair competition, state trademark dilution, common law and state unfair competition, and unfair and deceptive trade practices.

IBC turned to its advertising insurer, OneBeacon, expecting that OneBeacon would defend IBC in the Flowers lawsuit. OneBeacon, however, claimed that the policy did not provide coverage for the lawsuit. The central question in this appeal was whether OneBeacon had a duty to defend IBC.

IBC had an "Advertiser Advantage" insurance policy with OneBeacon that provided coverage for loss resulting from "claims arising from an occurrence committed by the insured during the policy term in or for scheduled advertising and arising from" any of seven enumerated grounds. The two applicable grounds here were:

The policy excluded from coverage claims "for or arising from infringement or dilution of trademark, trade name, trade dress, service mark or service name or unfair competition arising therefrom," with an explicit proviso that the exclusion didn't include claims for infringement of a title or slogan.

OneBeacon refused to defend IBC in the underlying lawsuit, so IBC asked the court for a declaration that OneBeacon had a duty to defend because "Nature's Own" is a slogan and a title under the policy.

The district court rejected IBC's contentions and denied the motion. The Eighth Circuit Court of Appeals agreed that OneBeacon did not have a duty to defend because "the Flowers Complaint failed to allege facts that would indicate the trademarked phrase 'Nature's Own' is potentially a 'title' or a 'slogan' and that the record in this case is insufficient to establish what a reasonable investigation by OneBeacon would have revealed about Flowers's use of the 'Nature's Own' trademark."

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