The Naked Cowboy will end up with more than a few dollars slipped into his boots from Mars Inc. and retail branding agency Chute Gerdeman. The naked cowboy sued both when they used his trademark protected “giddyap” to advertise the popular Mars product M&Ms

For those who never had the pleasure of a personal viewing, the Naked Cowboy is a New York City street performer. He is kind of a guitar playing Chippendale Dancer. He plays the guitar in Times Square clad only in white underwear, cowboy boots and cowboy hat. I saw the Naked Cowboy in action the last time I was in Times Square. Feeling myself on the verge of “self emasculation”, I elected not to put any money in his boot. I left Times Square with my “machismo” still in tact.

In the very near future Mars and Chute will wish they had slipped a few bucks into his Snakeskin boots. They did the incredibly stupid thing of using his “shtick‘ to sell their products without his permission. The Naked Cowboy filed a lawsuit against Mars Inc. and Chute Gerdeman Inc., after they released a video billboard showing a guitar-playing blue M&M dressed in a white cowboy hat, cowboy boots and underpants.

When interviewed, the Naked Cowboy stated:

“I have spent 10 years in every kind of weather and going through the legal, step by step process of getting a trademark,” Burck said. “It is imperative that damages are pushed so … an example will be set”

How did their trademark counsel miss the fact that his “manhood” may have trademark protection? Did Mars or their retail branding agency even consult trademark counsel? A first year trademark attorney would have known to check into this. If counsel did look into this, why did they conclude he had no protection for it?

The legal requirements for The Naked Cowboy to claim trademark infringement and basic trademark protection are not complicated. The Naked Cowboy has to be trademarked; has to prove that Mars, without his consent, infringed upon the trademark. He then has to show there’s a “likelihood of confusion” between his trademark and the allegedly infringing mark . This is for federal trademark protection. I suspect some New York State trademark laws have been broken as well.

Guys who put money in this cowboys boots are not the only ones who will be emasculated here. The guilty decision makers at Mars or Chute had better “cover up” for a gouging if they did not have opinion of counsel before they played their guitars.

I decided to get a plaintiff attorney’s take on the issue. I contacted Angel Reyes, a very well known and respected attorney in the Dallas firm of Heygood, Orr, Pearson & Bartolomei. They are a trial litigation firm in Dallas, Texas. Angel had this to say:

“No matter how much money you spend on lawyers, you just never know when something will get overlooked. Imagine overlooking the package the Naked Cowboy sports. I’m sure not many women who’ve seen him in Times Square have overlooked it, but it sure looks like Mars, Chute Gerdemen, and their high priced lawyers did. Maybe they should have called Nancy Grace, she’s got a sharp eye.”

Nancy may have a conflict of interest. I saw her slipping a ten spot into the boot of the Naked Cowboy the other day.

One last thought for the masses. How do you know if an M&M is naked?

©2008 Brian Cuban