Pickup line lands them in court Rental car firms sued over using trademark phrase in advertising

'We'll pick you up'

September 28, 1998|By Shanon D. Murray | Shanon D. Murray,SUN STAFF

A few months ago, Rent-A-Wreck of America played the starring role in an off-beat drama featuring a competitor that sued it for trademark infringement.

Today, the Owings Mills-based rental car company will return to center stage when its president serves as a witness in a lawsuit Enterprise Rent-A-Car Co. recently filed against Hertz Corp. in a similar case.

Kenneth L. Blum Jr., Rent-A-Wreck president, said the whole scenario has become a comedy of sorts -- bizarre and laughable.

At issue is the use of the phrase, "we'll pick you up," in advertisements by rental car companies.

St. Louis-based Enterprise federally registered the phrase last year, and has begun a campaign of suing competitors who use the trademarked words.

Rent-A-Wreck became Enterprise's first target when it was named in a lawsuit in April. Rent-A-Wreck said the federal judge in the case imposed settlement terms on the company, rejecting its plea for a trial. Rent-A-Wreck is appealing.

"The laughable part is that's what every company in the industry does. We all pick people up," Blum said. "Rent-A-Wreck has been doing it for 25 years.

"It's like McDonald's trademarking, 'We sell hamburgers,' " he said.

"When Enterprise sued us, we thought it was silly as hell," said Eugene Blum, Rent-A-Wreck's director of public relations, and Kenneth Blum's uncle.

Enterprise has targeted Hertz in its second federal lawsuit, which it filed in July. Hertz has asked Kenneth Blum to testify on its behalf in the deposition. Lawyers for Hertz and Enterprise are to take Blum's testimony today in Baltimore.

David Parkoff, assistant general counsel for Hertz, said in a written statement: "Hertz believes that it can use the English language words 'we'll pick you up' and their variants in a descriptive [and] informational sense and that Enterprise's claim trademark rights in those words is misplaced and does not prevent such use."

And to clutter the stage even more, Advantage Rent-A-Car Inc. in San Antonio, Texas, filed suit in June against Enterprise, saying it used the phrase much earlier than Enterprise.

Enterprise filed a counter-suit in July.

"We'll pick you up" may sound like a generic phrase, said Griffith Price, chairman of the trademark committee of the American Intellectual Property Law Association, but if Enterprise can prove consumers associate the phrase primarily with its company, then it is solely entitled to use it.

"It's understandable that, having obtained a trademark, Enterprise would seek to protect it; but if it can't prove that connection, then all companies are entitled to use it," said Price, an attorney specializing in trademark law at Finnegan Henderson, a Washington law firm.

"A generic word, phrase or design can never be trademarked," Price said. "But that has to be figured out by the courts."

Enterprise has "spent a lot of money making the slogan famous," said Rudy Telscher, an attorney with Senniger, Powers, Leavitt, Roedel in St. Louis, which represents Enterprise.

"We don't want people to get the idea that [Enterprise is] trying to beat up people in the industry," Telscher said, adding that the company spent about $120 million in the last four years advertising with the phrase.

Enterprise sued Rent-A-Wreck first because it learned of the company's advertisements first, Telscher said. After the lawsuit was filed, Enterprise learned of similar advertisements from Ace, Thrifty, and Dollar rental car companies.

dTC Those companies avoided litigation because they volunteered to stop using the phrase, Telscher said.

But Kenneth Blum said he believes Enterprise went after his company first because Rent-A-Wreck is its biggest competitor in their niche, which is basic transportation for local or vacation travel.

Rent-A-Wreck was founded 25 years ago in Los Angeles. The Blum family took it over five years ago and moved the business to Maryland.

The company has 500 franchises around the world and a fleet of 15,000 cars.

In comparison, Enterprise, which specializes in local rentals and insurance replacement rentals, has a fleet of about 350,000.

As part of its settlement with Enterprise, Rent-A-Wreck agreed to stop using the phrase.

"I give up the right to tell my customers we can pick them up, and that's pretty big," Kenneth Blum said.

The company also has enlisted the help of Maryland Democratic Rep. Benjamin L. Cardin, who is an attorney.

The congressman met with the Blums earlier in the month concerning the trademark issue and said he would "look into it with the U.S. Patent and Trademark Office," said Susan Sullam, a spokes- woman for Cardin.

The Blums said they would like to see federal trademark law changed to clear up what they believe are murky areas.

The biggest issue with the law, the Blums said, is that there isn't an easy way for companies to learn a competitor has applied for a trademark that may affect the industry. Usually, the only way to register a complaint after the fact is through a lawsuit.

Meanwhile, Rent-A-Wreck has modified its advertising campaign to remove the wording that has been trademarked by Enterprise, the Blums said.

"No one else in the industry would think about suing over 'we'll pick you up,' " Kenneth Blum said. "Ultimately, Enterprise will not prevail."

Pub Date: 9/28/98

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