Foxworthy v. Custom Tees, Inc.
879 F.Supp. 1200 (1995)
Foxworthy was a comedian who wrote a lot of jokes that
started with, "You might be a redneck if...." Custom Tees began producing a line of T-shirts that had Foxworthy's jokes on them, slightly
reformatted. Foxworthy sued in order to get an injunction for trademark
Custom Tees argued that they had changed the jokes just
enough to avoid infringing on Foxworthy's trademark.
The Trial Court found for Foxworthy.
Foxworthy never had a registered trademark.
Under 15 U.S.C. §1125(a), unregistered trademarks
are still protected.
That's called a common law trademark.
Custom Tees argued that the term "You might be a
redneck" was purely functional and therefore not trademarkable.
However, the Trial Court disagreed.
The term became a catch phrase when used in
connection to humor. Due to Foxworthy's efforts, the term was easily
identifiable with Foxworthy.
Therefore the trademark was descriptive but had taken
on a secondary meaning. That made it trademarkable.
The Trial Court found that Foxworthy did not have a
claim to all redneck humor, but just those jokes that distinguishes his
humor from other comedians.
In a similar case, the Dallas Cowboys cheerleaders were
successful in stopping other teams from using similar cheerleader
outfits even though they didn't claim a trademark to the concept of
cheerleader outfits. Only ones of similar color and style to theirs.
The Court found that Custom Tees use of the jokes
would confuse the public into assuming they were Foxworthy-approved
The standard for trademark infringement is whether the
infringing product is likely to cause confusion with the trademarked
product. There are a number of factors that the courts can use to
determine if an infringing product is liable to cause confusion:
How unique is the trademark?
Suggestive or fanciful trademarks have a
stronger case than descriptive trademarks.
How well known is the trademark?
How similar are the two names/phrases?
How similar are the two products?
How similar are the sales methods?
How similar is the advertising?
Is this a product that people think a lot about before
Is the infringing product actively trying to
Is there any actual data that that general public is
A trademark can never be used to bar competitors from
marketing a different product. If Custom Tees could successfully make a
case that it was impossible to tell a joke about rednecks without using
the phrase, Foxworthy would not be able to maintain the trademark.
Foxworthy was selling t-shirts, but even if he wasn't he
still would have a case. He could argue that he might market t-shirts
(since many similar comedians do), and therefore it's trademark
infringement even though he didn't have a similar product.
If he had never marketed any products, he would probably
be out of luck.