While the name became infamous with Steve Austin during WWE’s Attitude Era in the mid-late nineties and as a result aided the promotion’s survival in the Monday Night Wars with World Championship Wrestling, the NFL star has risen to the company’s attention with his merchandise line.
Chris Jones, who currently plays defensive tackle for the Kansas City Chiefs, has produced a line of sodas which he promptly named ‘Stone Cold Jones Soda’.
On September 14, 2020, WWE filed a complaint to oppose the trademark believing that infringed on their own ‘Stone Cold’ and ‘Stone Cold Steve Austin’ trademarks.
WWE’s complaint reads:
“The popularity, success, and recognition of WWE’s STONE COLD Marks are the direct result of the substantial time and money invested by WWE in development, marketing and promotion of the marks. WWE’s STONE COLD Marks are uniquely and exclusively associated with WWE and have become indelibly linked in the public’s mind in exclusive association with and in exclusive sponsorship by WWE.
WWE has used and continues to use its STONE COLD Marks in connection with its wrestling entertainment services and related goods through its programming which is distributed domestically and internationally through the WWE Network and is available on WWE’s other official online outlets (e.g., wwe.com and WWE’s YouTube channel), and its online merchandise store. WWE’s use of its STONE COLD Marks predates any date of first use upon which Applicant can rely.
Applicant’s “Stone Cold Jones” mark begins with and adopts WWE’s STONE COLD mark in its entirety; is nearly identical in sight, sound and commercial meaning to opposer’s STONE COLD Marks; and is likely, when used on or in connection with the International Class 25 goods and International Class 41 services set forth in the Stone Cold Jones.”
Naturally, the NFL player wasn’t going to roll over and die and responded to WWE’s complaint along with his Stone Cold LLC brand.
Believing that there was no confusion between his soda line and former WWE Superstar, ‘Stone Cold’ Steve Austin, it was said:
“As a result of Jones’ continuous and exclusive use of the STONE COLD JONES mark since the time of Jones’ first use in or around January 2019 in connection with its products, the Mark enjoys wide public acceptance and association with Chris Jones (“Mr. Jones”), professional football player and pro bowler. Further, the Mark has come to be recognized widely and favorably by the public as an indicator of the origin of Mr. Jones in conjunction with the National Football League (“NFL”), and more specifically the Kansas City Chiefs—2020 NFL Super Bowl Champions. Such goodwill and widespread usage has caused the Mark to acquire distinctiveness with respect to Mr. Jones, and caused the Mark to become a valuable asset of Jones
There is no likelihood of confusion, mistake, or deception because, inter alia, the Mark and the alleged trademark of Opposer are not confusingly similar.
Jones has been using the Mark and developing consumer recognition and goodwill therein since at least January 2019, such use being open, notorious, and known to Opposer and such knowledge, in turn, being known to Jones. Throughout this time, Opposer has failed to take meaningful action to assert the claims on which it bases this Opposition, on which inaction Jones has relied to its detriment. Opposer’s claims are consequently barred by the doctrines of laches, acquiescence, and estoppel.
Any and all acts alleged to have been committed by Jones were performed with lack of knowledge and lack of willful intent.”
While Jones Soda Co. and Stone Cold Brewery have also weighed in filing disputes, it remains to be seen who will be ruled in favour of and indeed who has the bottom line.