The Parties Are Advised to Chill: Pop Culture’s Wildest Trademark Fights
In 2002, a federal appeals court ended Mattel’s lawsuit over Aqua’s “Barbie Girl” with one line: “The parties are advised to chill.” Both sides had lost. Mattel couldn’t stop the song, and the record label lost its countersuit over Mattel calling the song a “heist.” (Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 908 (9th Cir. 2002).)
Most trademark fights don’t end with a punchline. They end with a forced rebrand, a lost market, or years of legal bills. The Kardashians had to rename their makeup line after a court found a Florida company already owned the name. A court barred Burger King from using its own name in one Illinois town. And a dog toy company spent twelve years in court with Jack Daniel’s over a squeaky bottle.
Below, we look at what these famous fights teach about protecting your brand before someone else forces the issue.
When Famous Brands Get It Wrong
Four of these fights have Florida roots. Burger King started in Jacksonville. The makeup company that beat the Kardashians is based here, and a rematch over the Kroma name was decided by a federal court in Orlando. The fourth is a fight between two universities in Miami-Dade County.
The Kardashians vs. a Florida Makeup Company
In 2012, Kim, Kourtney and Khloé Kardashian lent their names to a new cosmetics line called Khroma Beauty. One problem: a Florida company called By Lee Tillett had sold makeup under the name Kroma since 2004, and it held a federal trademark registration. (Boldface Licensing + Branding v. By Lee Tillett, Inc., 940 F. Supp. 2d 1178, 1182 (C.D. Cal. 2013).)
Tillett sent a cease-and-desist letter. The line launched nationwide anyway. Weeks later, the U.S. Patent and Trademark Office refused to register the Khroma name because it was too close to Kroma. The rollout kept going. In 2013, a federal judge blocked the name, and she was blunt about why: “Boldface was unquestionably aware of Tillett’s rights and still proceeded with the multi-million-dollar rollout of the KHROMA BEAUTY product line.” The judge noted that “even a cursory PTO search should have” turned up Tillett’s registration, and that the company kept going “[u]ndeterred” through two cease-and-desist letters, the trademark office’s refusals, and failed settlement talks. (Id. at 1195.) The products became Kardashian Beauty.
The sisters themselves said they had “no personal knowledge of the KROMA trademark until an entertainment news website, TMZ, published an article about the Kardashians’ potential infringement.” (Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc., 920 F.3d 704, 706 (11th Cir. 2019).) That quote comes from a Florida sequel. Tillett’s European distributor sued the Kardashians in federal court in Orlando and lost, because its license left “all ownership and enforcement rights” with Tillett. (Id. at 709.)
The lesson: Changing one letter won’t save a name that sounds the same. And if you license your brand, the contract decides who gets to protect it.
The Illinois Town Where Burger King Isn’t Burger King
Burger King “opened the first ‘Burger King’ restaurant in Jacksonville, Florida, in 1953” and spread across the Southeast. Meanwhile, in 1957, the Hoots, “who had been operating an ice cream business in Mattoon, Illinois, opened a ‘Burger King’ restaurant there.” They registered the name with the State of Illinois in 1959, “without notice of plaintiffs’ prior use of the same mark.” (Burger King of Fla., Inc. v. Hoots, 403 F.2d 904, 906 (7th Cir. 1968).)
The chain arrived in Illinois in 1961 and got its federal registration that same year. Both sides sued. In 1968, a federal appeals court split the state. The chain’s federal registration “gave them the exclusive right to use the mark in Illinois except in the Mattoon market area in Illinois where the defendants, without knowledge of plaintiffs’ prior use, actually used the mark before plaintiffs’ federal registration.” (Id.) The result left the two Burger Kings in “sufficiently distinct and geographically separate markets so that public confusion would be reduced to a minimum.” (Id. at 909.)
The lesson: Register early. A federal registration protects your name across the country, but it can’t take a town away from someone who was already using the name there.
Twelve Years Over a Dog Toy
“This case is about dog toys and whiskey, two items seldom appearing in the same sentence.” That’s how Justice Kagan opened the Supreme Court’s unanimous opinion about Bad Spaniels, a squeaky toy shaped like a Jack Daniel’s bottle on which “‘Old No. 7 Brand Tennessee Sour Mash Whiskey’ turns into ‘The Old No. 2 On Your Tennessee Carpet.’” As the Court put it, “[t]he jokes did not impress petitioner Jack Daniel’s Properties.” (Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 144 (2023).)
VIP argued the toy was a parody protected by the First Amendment. The Court disagreed, at least as a shortcut. When a company uses someone else’s mark “to designate the source of its own goods,” it “has used a trademark as a trademark,” and “[t]hat kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection.” (Id. at 145.) The parody still counts, just not as a free pass. The Court sent the case back to decide whether shoppers were likely to be confused, noting that “consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.” (Id. at 153.)
Back in Arizona, the trial judge found that shoppers weren’t confused, but blocked the toy anyway for tarnishing the whiskey brand. In August 2026, the Ninth Circuit threw out that order in an opinion that opens, “A man walks into a bar.” (VIP Prods., LLC v. United States, 185 F.4th 919, 922 (9th Cir. 2026).) Jack Daniel’s expert had testified that linking any food or drink with defecation creates disgust. The court’s answer: “But Bad Spaniels is a parodic dog toy not intended for human consumption,” and the expert’s opinion was “pure conjecture.” (Id. at 932.)
The lesson: VIP won the latest round, but it took twelve years and a trip to the Supreme Court. Parody can be a defense. It’s just an expensive one to prove.
FIU vs. the University Down the Street
Florida International University is one of the largest public universities in the country, and it owns a federal trademark in its name. Florida National University is “a for-profit, private higher education institution headquartered in Hialeah, Florida,” founded in 1987 as Florida International Institute. When it renamed itself Florida International College, FIU sued, and the school agreed to become Florida National College instead. For the next 23 years the two schools “coexisted ‘very peacefully.’” (Fla. Int’l Univ. Bd. of Trs. v. Fla. Nat’l Univ., Inc., 830 F.3d 1242, 1248 (11th Cir. 2016).)
Then, in 2012, Florida National College became Florida National University. FIU sued again. This time it lost, in a Miami federal courtroom and again on appeal. The problem was the crowded field: “twelve other higher education institutions in the state of Florida use both ‘Florida’ and ‘University’ in their names (and the letters ‘F’ and ‘U’ in their initials).” (Id. at 1257-58.) Five of them have “three-word names that differ by only one word, and acronyms that differ by only one letter.” (Id. at 1258.) When a name sits in a crowd like that, “slight differences in names may be meaningful because consumers ‘will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other.’” (Id. at 1260 (quoting 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:85).) It didn’t help FIU that one FNU campus is “less than two miles from FIU’s main campus.” (Id. at 1249.)
The lesson: A descriptive name is hard to protect. If your name is built from common words that your competitors also use, a federal registration won’t stop someone from getting close.
Nine Years to Own Your Own Name
Even the most famous athlete in the world needed lawyers for this one. In 2011, Lionel Messi applied to register “MESSI” in the European Union for sportswear and equipment. The owner of a Spanish cycling brand called “MASSI” objected, and the EU trademark office agreed: the names looked and sounded too similar. Messi fought back through two levels of appeal, and in September 2020 the Court of Justice of the European Union ruled for him. His fame was “one of the relevant factors for the purposes of assessing the likelihood of confusion,” because it changes how the public understands the name. (Joined Cases C-449/18 P & C-474/18 P, EUIPO v. Messi Cuccittini (CJEU Sept. 17, 2020); Court of Justice of the European Union, Press Release No. 108/20 (Sept. 17, 2020).) Messi won the right to register his name nine years after he filed for it. Today he plays for Inter Miami.
The lesson: Fame can help you win a trademark fight. It can’t make the fight short.
One More Thing: The Fake Invoice
There’s a smaller trap waiting for anyone who files a trademark application. Once you file, your name and address become public, and companies with names like “Trademark Renewal Service” or “Patent and Trademark Bureau” start mailing invoices that look like government bills. The USPTO’s own warning page describes the pattern: official-sounding names, “fine print explaining the company isn’t a federal agency,” and “a demand for immediate action or payment that’s not due.” (U.S. Patent & Trademark Office, Recognizing Common Scams (last visited Nov. 2, 2026).) Some scammers now call pretending to be USPTO examiners, with caller ID faked to match.
Two rules sort out the real from the fake. Official emails come from an address ending in @uspto.gov. And every official notice appears in your application’s file on the USPTO’s TSDR system. As the USPTO puts it, “If it’s not in TSDR, it’s not an official communication.” (Id.) If you’re not sure, call your attorney before you pay anyone.
Practical Guidance for Business Owners
Search before you launch. The company behind Khroma Beauty would have found the Kroma registration with, in the judge’s words, “even a cursory PTO search.” (Boldface, 940 F. Supp. 2d at 1195.) Run a clearance search before you pay for signs, packaging or a website, and have someone read the results for names that are close, not just names that match.
Register federally, and do it early. Using a name gives you rights only where you actually do business. Burger King’s federal registration won it the whole state of Illinois, except the one town where someone else had been first. (Burger King, 403 F.2d at 906.)
Don’t answer a cease-and-desist letter on your own. Some letters overreach, and some are the first step toward a lawsuit. Boldface ignored two of them and lost its brand. VIP answered one with a lawsuit and spent twelve years in court. Have an attorney read the letter and tell you where you stand before you reply.
About the Author
Evelyn Manresa Lozano holds a Juris Doctor from the University of Kansas School of Law and is a Law Clerk for La Rosa Law, P.A., a business law and litigation firm in Miami-Dade County, Florida.
This article is for general information only. It is not legal advice, and reading it does not create an attorney-client relationship with La Rosa Law, P.A.
