U.S. DISTRICT COURT FOR NORTHERN DISTRICT OF GEORGIA RULES WAL-MART HAS NO ESTABLISHED TRADEMARK RIGHTS IN THE UBIGUITOUS, YELLOW SMILEY FACE

There is little dispute that the yellow "smiley face" has been in commercial existence since the early 1970's, if not before. However, the trademark rights to the ubiquitous and timeless image have yet to be established, some 35 years later.

Regardless, Wal-Mart, the mega-store retailer, argues that it has gained exclusive trademark protection for the well-recognized, yellow smiley face from its continued commercial use of the image in its mega-stores.

However, on March 20, 2008, the US District Court for the Southern District of Georgia ruled, in part, that Wal-Mart has established no current rights in the trademark.

The District Court ruling stems from a trademark infringement lawsuit Wal-Mart brought against a Georgia man, who was making and selling T-shirts, beer steins, and other items sporting various slogans parodying Wal-Mart.

What was not in dispute is the fact that Wal-Mart has trademark protection for "WALMART" "WAL-MART" AND "WAL*MART", and its registered word mark "ALWAYS LOW PRICES, ALWAYS." In dispute, however, was Wal-Mart's contention that it had acquired common law trademark rights in the smiley face under the principle of "secondary meaning." Here, the court strongly disagreed.

A mark, like the smiley face, that is not inherently distinctive, may acquire distinctiveness or secondary meaning by "becoming associated in the minds of the public with the products or services offered by the proprietor of the mark..." the court stated, quoting a 2007 Eleventh Circuit opinion.

However, Wal-Mart failed to establish this level of recognition, acceptance, or distinctiveness, the court concluded.

The District Court found that Wal-Mart presented little evidence to support its secondary meaning claim to the smiley face. In fact, the only evidence presented by Wal-Mart supporting its claim was a "conclusory" affidavit from a senior marketing manager who had been with the company since November 2006.

In turn, the District Court granted defendant's summary judgment motion on all Wal-Mart claims pertaining to the yellow smiley face.

Wal-Mart, however, continues to fight for trademark rights in the smiley face. The United States Patent and Trademark Office has still not ruled on a dispute over the rights to the smiley face between Wal-Mart and a French family that claims to have registered the design with French trademark authorities. The dispute began in 2005.

The 65 year-old French citizen, Franklin Loufrani, registered the smiley face in France in 1971. As Loufrani told the New York Times in 2006, "A prehistoric man probably invented the smiley face in some cave, but I certainly was the first to register it as a trademark." And, Loufrani says, "When it comes to commercial use, registration, is what counts."

The New York Times also reports that the most widely accepted claim for inventing the smiley face goes to Harvey Ball, for the smiley yellow button he designed for the State Mutual Life Assurance Company of America in 1963.

According to Ball's 2001 obituary in The Worcester Telegram & Gazette, the Times reports, Ball was paid $45 for designing the button intended to cheer up employees during a tough time for the company. Ball, however, never registered the mark or used the mark commercially.

Here is the New York Times article referenced above (Smiley Face Is Serious to Company) and another article from the Trademark Law Blog on Lexis/Nexis (Trademark Law Center: Trademark Infringement: No Smiley Face).