## Facts

- Haydel Enterprises operated a New Orleans bakery and in 2008 commissioned a “Mardi Gras Bead Dog” mascot: a stylized dog formed by bead-like spheres used on cakes, jewelry, and clothing.
- “Bead dogs” were also a longstanding Mardi Gras craft tradition made by twisting plastic bead strands into dog shapes.
- In 2009, Haydel obtained federal trademark registrations for “MARDI GRAS BEAD DOG” and a bead-dog design for goods including king cakes, jewelry, and clothing.
- In 2012, Nola Spice Designs, formed by Raquel Duarte, sold handmade bead-dog jewelry made from beads and wire.
- Haydel obtained a copyright registration for its “Bead Dog” work and sent Nola Spice a cease-and-desist letter asserting trademark and copyright rights.
- Nola Spice sued seeking declaratory relief of non-infringement, cancellation of the trademarks, and state-law relief; Haydel counterclaimed for federal trademark and copyright infringement, dilution, unfair competition, and Louisiana unfair trade practices.
- The district court granted summary judgment for Nola Spice, canceled Haydel’s trademark registrations, rejected Haydel’s infringement and state-law claims, and dismissed Nola Spice’s Louisiana claim with prejudice (not appealed).

## Issues

1. Whether Haydel’s “MARDI GRAS BEAD DOG” word mark and bead-dog design were distinctive and therefore protectable under the Lanham Act (inherently or through secondary meaning).
2. Whether, assuming protectability, Nola Spice’s use of “bead dog” and sale of bead-dog jewelry created actionable trademark infringement, unfair competition, or dilution.
3. Whether Nola Spice’s bead-dog jewelry copied protectable elements of Haydel’s copyrighted bead-dog work with substantial similarity.
4. Whether Louisiana unfair-trade-practice liability could be established based on Nola Spice’s conduct when the asserted IP rights were not enforceable.

## Decision

- The Fifth Circuit affirmed summary judgment for Nola Spice and affirmed cancellation of Haydel’s trademark registrations.
- The court held Haydel’s word mark and design were, at most, descriptive of a traditional Mardi Gras object and lacked secondary meaning; therefore, they were not valid, protectable trademarks.
- Because no valid trademark rights existed, Haydel’s federal claims for trademark infringement, unfair competition, and dilution failed as a matter of law.
- The court held Nola Spice did not infringe Haydel’s copyright because the accused jewelry was not substantially similar to protectable expressive elements of Haydel’s registered work.
- The court affirmed rejection of Haydel’s Louisiana unfair-trade-practice theories because they did not establish an independent basis for liability beyond the failed IP claims.

## Legal Principles

- Trademark protection requires a distinctive mark; descriptive marks are protectable only upon proof of secondary meaning linking the mark to a single source in consumers’ minds.
- Terms and symbols closely tied to a widely recognized cultural or traditional practice are difficult to protect as exclusive trademarks absent strong evidence of secondary meaning.
- Lanham Act infringement and related unfair-competition theories require a legally protectable mark as a threshold element.
- Trademark dilution protection is unavailable without the requisite degree of distinctiveness and widespread public recognition.
- Copyright protects original expression, not the underlying idea or common elements associated with a traditional craft; infringement requires substantial similarity in protectable elements after excluding unprotectable features.
- State unfair-trade-practice statutes generally cannot be used to impose liability where the complained-of conduct is coextensive with failed federal IP claims and no separate wrongful act is shown.

## Conclusion

The Fifth Circuit concluded that “Mardi Gras Bead Dog” and the associated design described a traditional Mardi Gras craft and lacked secondary meaning, requiring cancellation of the registrations and defeating Haydel’s trademark-based claims; it also found no substantial similarity in protectable expression to support copyright infringement, leaving no independent basis for Louisiana unfair-trade-practice liability.


Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527 (5th Cir. 2015)