FORT MYERS — You can't fake fresh.
It was a fresh slogan back in 2004, when Pinchers Crab Shack had first used it. It was so successful the restaurant's owner, Phelan Holdings Inc. of Fort Myers Beach, trademarked it last year for its seven restaurants, including Naples and Bonita Springs.
So when Wendy's began using it in commercials, the Southwest Florida restaurant chain sued.
The trademark infringement lawsuit, filed this week in U.S. District Court in Fort Myers, alleges those four words are worth more than $2 million.
"Plaintiff's mark is beyond distinctive and unique," the 54-page lawsuit says. "Upon information and belief, in all the history of the United States, no one has applied for or registered a mark with YOU CAN'T FAKE anything in it for restaurant services. Plaintiff was the first ever."
Trademark office records show Phelan Holdings Inc. applied to register its slogan, "You can't fake fresh," on July 10, 2009, and it was registered Feb. 16, 2010. In contrast, Wendy's applied to use a similar slogan, "You know when it's real," on Sept. 21, 2009, and it was registered May 4, 2010.
Phelan Holdings even beat Legal Seafoods to a similar slogan, "If it isn't fresh, it isn't legal," which was registered on March 5 of this year.
The lawsuit was filed by Naples attorney Jennifer Whitelaw of Whitelaw Legal Group, a lawyer recently recognized as one of the nation's top four trademark attorneys by Trademark Insider.
Her firm has represented many nationally known companies, including Allstate Insurance, H&R Block and Sony. It gained national headlines when Sunshine Ace Hardware of Southwest Florida sued Home Depot for stealing its slogan, You Can Do It. We Can Help." More recently, she was successful in a lawsuit by Naples-based Best of Everything against Fashion Jewelry Paradise in Fort Myers.
"It’s a great trademark," Whitelaw said of Pinchers' slogan. "Our client worked hard to create it and our legal team worked hard to protect it and to successfully register it. From there, apparently it caught the eye of another suitor. Admiring our client’s mark is understandable, but this is a bit more admiration than what the law allows."
Whitelaw noted that today's marketplace is well-informed about intellectual property rights, especially large, sophisticated companies.
"To fly in the face of that — to be, if you will, so brazen — is to venture into what many would have considered to be an unacceptable risk, and potentially colossal liability," she added.
Denny Lynch, Wendy's senior vice president of communications, and other spokesmen could not immediately be reached for comment Wednesday afternoon or Thursday.
The lawsuit is filed under the name Pincher's Crab Shack and the Fort Myers Beach location uses the corporate name Pincher's Beach Bar & Grill. However, corporate records for the other locations, which also include a tiki bar in Fort Myers Beach, Fort Myers, Gulf Coast Town Center and Sarasota, are under the name Pinchers Crab Shack.
The Pinchers lawsuit alleges Wendy's has about 6,500 restaurants and spends "hundreds of millions of dollars yearly" in advertising and promotions, generating "billions of dollars" in revenues, to target "exactly the same group ... restaurant-going consumers."
It contends the use of its slogan is unauthorized, infringing, unlicensed and imitative and Wendy's products are now being associated with the seafood restaurant and Wendy's products are — or may be — inferior.
The lawsuit includes a photo of a Wendy's commercial showing two employees, with one holding a sign that says, "you CAN'T FAKE fresh." It contends Wendy's use of the mark is "the functional equivalent" of Pinchers' mark and alleges a second slogan used by Wendy's, "You can't fake real," shown under ads on its website, is "fruit of the poisonous tree."
That legal doctrine draws it name form the idea that once the tree is poisoned, meaning the slogan has been illegally obtained and any secondary slogan also is tainted and cannot be used.
"Defendants created a connection between the term 'You can't fake fresh' and the term 'You can't fake real' and advertised that connection repeatedly," says the lawsuit, which shows an image of the commercial on Wendy's website, calls the two "confusingly similar" and contends Wendy's is trying to "cash in" on Pinchers good reputation and exclusive rights.
The lawsuit contends Wendy's is deceiving the public and confusion with Pinchers' innovative, first and distinctive image is engendering bad will because the public responds to particular details about how Wendy's does business. Exhibit 3 of the lawsuit shows a blog mocking the "You can't fake fresh" and "You can't fake real" logos.
"So, do they slaughter the cows behind each restaurant? Or do they contract with a slaughter house in each city where there's a Wendy's? Or, do they fly freshly slaughtered beef to each city every morning?" the blog asks. "Who gives a damn if they freeze their beef if it's poison to begin with? They're just making all this s— up."
The exhibit references another logo on Wendy's website, "Robot assembled or handmade? Ice puck frozen or fresh-cooked? You can always tell real from fake."
Pinchers’ website says its local fishermen and seafood processing facility enable it to deliver fresh fish and shellfish to the table “faster and fresher.”
The lawsuit contends Wendy's has targeted restaurants in Pinchers' geographic area, giving Pinchers' slogan "prominent national placement, over all other Wendy's locations," on its Cape Coral location.
An attachment shows the Cape Coral Wendy's on a citysearch.com listing with "You can't fake fresh!®" — with the circled R indicating Wendy's registered that mark.
In addition to federal trademark infringement, the 15-count lawsuit seeks a permanent injunction to stop Wendy's from further use and to deliver any advertising, signs and other business literature to Pinchers. It also alleges unfair competition, trademark counterfeiting, false designation of origin, false and misleading description of fact, false or misleading representation, passing off, and similar violations under Florida law, including trademark infringement and deceptive and unfair trade practices, injury to business reputation and dilution, unfair competition, unjust enrichment, and misappropriation.
The lawsuit contends Pinchers is entitled to recover damages, including for false advertising and reverse confusion, and triple damages and interest for any costs and fees Pinchers has or will incur. Pinchers also seeks any gains, profits and advantages obtained by Wendy's due to the use of its slogan.