Dangerous Incorporated
12-23-2006, 12:53 AM
Okerlund can't use Hot Stuff logos but owns his nicknames
A former pro-wrestling announcer and South Dakota native won't be allowed to do business any longer using brand names developed by Sioux Falls-based Hot Stuff Foods, thanks to a recent court ruling.
Both Hot Stuff and "Mean" Gene Okerlund are claiming victories from the ruling.
It prevents Mean Gene Enterprises from using the Mean Gene's Burgers and Mean Gene's Pizza names and logos that have been used by Hot Stuff since 1997, as long as Hot Stuff continues to maintain the franchises and pay Okerlund royalties.
"The court agreed with what we already knew," said Des Hague, Hot Stuff's chairman and chief executive.
The court also found Hot Stuff wasn't entitled to trademark protection of the "Mean Gene's" name beyond its marketing agreement with Okerlund.
That means Okerlund owns the Mean Gene's nickname and can use it for marketing after the licensing agreement expires.
Okerlund said he's going forward with a new food business venture that doesn't include the two brands.
"I've got my name back, and I've got every intention to use it legally as outlined in the court ruling," Okerlund said.
The company, formerly Orion Food Systems, signed a personality endorsement deal with Okerlund in 1997 to market the burgers and pizzas, and since has paid Okerlund more than $1 million to appear at events and in advertisements.
Litigation began in May 2006, when Hot Stuff filed a federal lawsuit against Okerlund that accused him of attempting to steal the brand bearing his name.Okerlund's son, Todd, who did business with Hot Stuff; his nephew, Blaze, who worked for Hot Stuff; and a former Hot Stuff employee, Mark McKee, also are defendants.
Okerlund is accused of conspiring with former Hot Stuff employees to sell their own line of foods, also featuring the "Mean Gene" name, by sending letters to Hot Stuff franchisees with a logo identical to the one used by Hot Stuff and marked with Okerlund's signature.
Okerlund filed a countersuit alleging Hot Stuff wrongfully used his nickname after he terminated an agreement with the company.
In last week's ruling, District Court Judge Lawrence Piersol wrote that "a considerable threat of irreparable harm to Hot Stuff was established" after Mean Gene's Enterprises sent the letter to franchisees.
"The products, pizza, burgers and other food products are closely related, and the parties are in direct competition," Piersol wrote.
Hot Stuff registered Mean Gene's Burgers as a federal trademark and attempted to register Mean Gene's Pizza. Piersol ruled that Hot Stuff's marketing agreements with Okerlund meant that it had a license to use the trademarks, but didn't own them.
"Hot Stuff, therefore, is not entitled to trademark protection outside of what exists in its license agreement under the common law," Piersol wrote.
Piersol canceled the trademark registration for Mean Gene's Burgers and also found McKee in violation of the non-compete clause he signed when leaving Hot Stuff.
Hot Stuff no longer is actively soliciting new franchisees for for the Mean Gene concepts, but the company will continue to maintain the current franchises, said Stephen Landon, who represents Hot Stuff. Hot Stuff has been converting some of the pizza locations to another company brand name.
Okerlund plans to focus on building his latest venture, Fuzion Food Group, which provides consulting and branding services for food service operations.
"Our present plans are to go into the restaurant setting and free-standing operations," Okerlund said.
Source: ArgusLeader
A former pro-wrestling announcer and South Dakota native won't be allowed to do business any longer using brand names developed by Sioux Falls-based Hot Stuff Foods, thanks to a recent court ruling.
Both Hot Stuff and "Mean" Gene Okerlund are claiming victories from the ruling.
It prevents Mean Gene Enterprises from using the Mean Gene's Burgers and Mean Gene's Pizza names and logos that have been used by Hot Stuff since 1997, as long as Hot Stuff continues to maintain the franchises and pay Okerlund royalties.
"The court agreed with what we already knew," said Des Hague, Hot Stuff's chairman and chief executive.
The court also found Hot Stuff wasn't entitled to trademark protection of the "Mean Gene's" name beyond its marketing agreement with Okerlund.
That means Okerlund owns the Mean Gene's nickname and can use it for marketing after the licensing agreement expires.
Okerlund said he's going forward with a new food business venture that doesn't include the two brands.
"I've got my name back, and I've got every intention to use it legally as outlined in the court ruling," Okerlund said.
The company, formerly Orion Food Systems, signed a personality endorsement deal with Okerlund in 1997 to market the burgers and pizzas, and since has paid Okerlund more than $1 million to appear at events and in advertisements.
Litigation began in May 2006, when Hot Stuff filed a federal lawsuit against Okerlund that accused him of attempting to steal the brand bearing his name.Okerlund's son, Todd, who did business with Hot Stuff; his nephew, Blaze, who worked for Hot Stuff; and a former Hot Stuff employee, Mark McKee, also are defendants.
Okerlund is accused of conspiring with former Hot Stuff employees to sell their own line of foods, also featuring the "Mean Gene" name, by sending letters to Hot Stuff franchisees with a logo identical to the one used by Hot Stuff and marked with Okerlund's signature.
Okerlund filed a countersuit alleging Hot Stuff wrongfully used his nickname after he terminated an agreement with the company.
In last week's ruling, District Court Judge Lawrence Piersol wrote that "a considerable threat of irreparable harm to Hot Stuff was established" after Mean Gene's Enterprises sent the letter to franchisees.
"The products, pizza, burgers and other food products are closely related, and the parties are in direct competition," Piersol wrote.
Hot Stuff registered Mean Gene's Burgers as a federal trademark and attempted to register Mean Gene's Pizza. Piersol ruled that Hot Stuff's marketing agreements with Okerlund meant that it had a license to use the trademarks, but didn't own them.
"Hot Stuff, therefore, is not entitled to trademark protection outside of what exists in its license agreement under the common law," Piersol wrote.
Piersol canceled the trademark registration for Mean Gene's Burgers and also found McKee in violation of the non-compete clause he signed when leaving Hot Stuff.
Hot Stuff no longer is actively soliciting new franchisees for for the Mean Gene concepts, but the company will continue to maintain the current franchises, said Stephen Landon, who represents Hot Stuff. Hot Stuff has been converting some of the pizza locations to another company brand name.
Okerlund plans to focus on building his latest venture, Fuzion Food Group, which provides consulting and branding services for food service operations.
"Our present plans are to go into the restaurant setting and free-standing operations," Okerlund said.
Source: ArgusLeader