Kansas Coffee Shop Targeted By 1980's Hair Band's Trademark Lawyers

1980's Hair Band Twisted Sister in Concert / Wikimedia Commons

Sandi Russell, along with her sister, Nancy Hansen, are two sisters operating a small coffee shop in Mission, Kansas.  Their coffee shop's name is "Twisted Sisters," and their domain name is www.TwistedSistersCoffeeShop.com.


Russell recently reported that she received a formal cease and desist letter telling them to change the name because it has been trademarked by the 1980's hair band Twisted Sister which owns and operates www.TwistedSister.com.


According to the letter, the Twisted Sister musical group coined the name “TWISTED SISTER” in 1973, and “the
juxtaposition of those two words never appeared prior to the creation and adoption of the mark by the band.”

Continuously since then, the band has had extensive media publicity and exposure of its mark, having released at least 12 full albums and 4 DVDs since 1973 under the TWISTED SISTER mark, which have been distributed and
 sold throughout the United States and worldwide. 


Consequently, according to its lawyers, the band’s trademark is well-established and legally deemed "famous."

It is true that Twisted Sister has a federally registered and incontestable federal trademark (1,098,366) issued in 1978, but that trademark only covers: "ENTERTAINMENT SERVICES RENDERED BY A VOCAL AND INSTRUMENTAL GROUP."

The letter notes that the band has been successful in requiring that the Twisted Sister Bakery in Chicago and Twisted Sister Pizza in Massachusetts change their names.

Not mentioned in the letter is that third parties have apparently received numerous approved trademarks for marks using "TWISTED SISTER" (and variants), such as for Twisted Sisters Wine (3,443,617), Twisted Sisters clothing boutique (3,216,315), Twisted Sisters Our Business Is Dyeing colored yarns (3,027,439) and Twisted Sista for hair care products (3,947,150).  All of those are live trademarks that appear to have nothing to do with the band.

Therefore, to establish even a prima facie case of trademark infringement, the lawyers would need to plead that the coffee shop's continued use of the “Twisted Sisters” name in connection with a small coffee shop is likely to lead to consumer confusion as to endorsement, sponsorship or affiliation with the 1980's band.  

This claim would likely be an uphill battle from an evidentiary standpoint, and would probably require an expensive survey expert. One suspects that instances of actual confusion among consumers would be difficult to locate.

However, assuming the trademark is indeed “famous” and worthy of legal protection under the Federal Trademark Dilution Act, the band need only prove that the use of the unauthorized name is likely to dilute, either through tarnishment or blurring, the distinctive nature and fame of the band’s mark.  In this context, this claim may be easier to plead even in the absence of confusion, as there is no doubt that the Twisted Sisters Coffee Shop likely "calls to mind" the 80's band, potentially blurring its distinctive quality.

Faced with the band’s demand that it change its name, the coffee shop’s owners reportedly intend to do just that.  As of today, the coffee shop's website is no longer operational.

Ben and Jerry's Sues Porn Company Over Adult Film Titles

Vermont-based Ben & Jerry's Ice Cream, a subsidiary of Unilever, is known for its creative flavors with names such as “Schweddy Balls” and “Karamel Sutra.”

The ice cream company was not amused, however, when an adult entertainment company used the name “Ben & Cherry’s” to sell X-rated DVDs that intentionally mimicked the ice cream maker’s titles and distinctive trade dress.

Ben & Jerry’s filed a trademark/trade dress infringement and dilution complaint in U.S. District Court for the Southern District of New York against the maker of adult entertainment titles such as “Boston Cream Thighs,” “Peanut Butter D-Cups” and “Chocolate Fudge Babes.”  The District Court has entered a Preliminary Injunction against the Defendant’s further use of the brand names.

Adult entertainment companies have faced similar trademark and trade dress litigation before, and enjoyed only mixed results when asserting the parody/free speech defense in response to the Plaintiff's assertion that the parodies are too close, and are likely to confuse consumers and dilute their famous brands.

For example, in the late 1970's, the Dallas Cowboy's Cheerleaders sued various distributors of "Debbie Does Dallas."

In the Dallas Cowboys v. Pussycat Cinema, an adult theater in New York City that was showing the films was enjoined by the District Court.

The Dallas Cowboys Cheerleaders successfully argued that their famous uniforms were copied by the film's producers and used in advertising without their permission in a manner that was likely to cause confusion and dilution.  The ruling was affirmed by the Second Circuit Court of Appeals.

However, in 2001, George Lucas sued the producers of a Star Wars parody titled Starballz.  The District Court in California held that "the Star Wars films are so famous that it is extremely unlikely that consumers would believe that Starballz is associated with Star Wars or Lucasfilm."

The mixed rulings have only emboldened the adult film industry to press its luck in recent years, making such sophisticated "parodies" even with celebrity lookalikes, as depicted below:

The North Face Kicks Butt...Face

The North Face has asked a federal judge to hold the owners of "The South Butt" in contempt of court.

The North Face had sued James "Jimmy" Winkelmann and the South Butt LLC in 2009, alleging trademark infringement from the use of "THE SOUTH BUTT."  The defendants claimed it was merely a parody, but the Defendants consented to a Permanent Injunction in 2010 barring them from using any of the South Butt marks.

The North Face now claims that only two days later, the now-enjoined Defendants formed a new company called Why Climb Mountains LLC, and came out with a new clothing line -- THE BUTT FACE.

North Face Apparel cites a consumer survey that it conducted, showing that more than 1 out of 3 people perceive the North Face as being associated with the Butt Face mark.

North Face Apparel is seeking sanctions including damages and attorneys' fees.

The case raises several interesting legal issues.  First, when a defendant consents to be permanently enjoined after having been sued, he is under a legal duty to steer clearer of potential infringement than he otherwise would have in the first place.

Therefore, had the South Butt came out with "THE BUTT FACE" initially, it may or may not have been found liable (although given the results of the survey, they probably would have been sued anyway).  But the point is that Court Orders have to have meaning or else, where is the finality to litigation?

Further, the parody defense that could have potentially prevailed in the first case, becomes a tougher sell to the Court the second time around, as the defendant's conduct demonstrates its potential for treating the litigation process as a joke, and disrespecting the Court's authority.

Is it Trademark Infringement to Make Your Own Fakes?

The Huffington Post is reporting that there is a run on a particular pantone of red paint in the United Kingdom.

Why red paint?

Faced with the high price of genuine Christian Louboutin designer pumps, some cash-strapped British wannabe fashionistas are painting the soles of their high heel shoes a specific shade of red, in a deliberate imitation of the designer's federally registered trademark.

In response to the Huffington Post article, I was asked the obvious question by many people:  "Is that practice legal in the United States?"

I had to pause to make sure that I was absolutely convinced that the following statement was really true:

"Yes.  This practice is absolutely legal in the United States."

Intentionally applying a counterfeit, imitation trademark to a product for one's own personal use, assuming that there is ZERO chance that the item will ever be sold or offered for sale to anyone -- is perfectly legal under current U.S. trademark laws.  It is perfectly legal to own, wear and proudly display a counterfeit product on one's own person.

The Lanham Act, codified at 15 U.S.C. § 1051 et seq., is the primary federal statute of trademark law in the United States.  The Lanham Act prohibits a number of activities, including trademark infringement, trademark dilution, false advertising and false designation of origin.

If someone were to offer a product for sale that infringes upon, dilutes or causes confusion with a protectable trademark or design, that person would be civilly (and possibly even criminally) liable under the Lanham Act for monetary damages and an injunction (a court order) against their continued conduct.  The goods can also be confiscated and destroyed.

In a case where I represented French designer Hermes of Paris, a 3-judge panel on the influential U.S. Court of Appeals for the Second Circuit in Manhattan unanimously wrote:

"Such a practice [of selling knockoffs] does harm the public, however, by creating post-sale confusion, not just among high-end consumers, but among the general public, which may believe that the knockoff is actually the genuine article.  In fact, high-end consumers may be less confused than the general public in the post-sale context because many of them will be aware of the existence of copies.  In either case, a loss occurs when a sophisticated buyer purchases a knockoff and passes it off to the public as the genuine article, thereby confusing the viewing public and achieving the status of owning the genuine article at a knockoff price."  Hermes Int'l et al. v. Lederer de Paris Fifth Avenue, Inc., et al., 219 F.3d 104, 106 (2d Cir. 2000).

But in each of its relevant prohibitions against knockoffs, the Lanham Act deliberately utilizes a key word -- commerce.

Absent some form of actual, intended or apparent "use in commerce," the imitation shoes that a person makes solely for their own personal use and display cannot be accused in a federal court as being an infringement, dilution or false advertising.

Indeed, that result is true even if the copycat shoes are admittedly designed to cause the third-party, "post-sale" consumer confusion that the Court of Appeals said is harmful.

Cheap knockoff shoes can also "dilute" the fame and power of a well-known brand (especially if the imitation shoes are lousy quality, which would "tarnish" the fame of the red-sole Louboutin trademark).

But the manufacture and use of personal copycat red soled shoes, assuming no use in commerce other than the mere act of a private person wearing them, is simply not illegal under current U.S. federal law.

That perverse outcome means that even if an ill-intentioned person were to manufacture many pairs of such shoes, for no commercial purpose other than to deceive their friends and onlookers into believing that they are fashionable enough to own a hundred pair, there is nothing the trademark owner can legally do to stop that person.

Perhaps the more interesting and unresolved question is...could a designer accuse a famous celebrity who chooses to wear knockoffs on the red carpet, of essentially "endorsing" the fake goods in an unlawful commercial manner?

Pop Art: Free Expression or Trademark Infringement?

A frequently-asked question of Intellectual Property lawyers relates to pop artists' use of famous, trademarked products in the context of artistic expression, and whether such uses are protected free speech, or are really nothing more than infringement and dilution cloaked in the guise of art.  Examples include Andy Warhol's famous paintings of Campbell's soup cans (above), as well as the juxtaposition of famous brand logos on guns and weapons of war such as Peter Gronquists' controversial uses (see below).  The legal analysis is not simple, and depends largely on the factual circumstances surrounding the use of the trademarked products.

A trademark is a word, symbol or design used to identify the source of a product. In order for a court to determine if the unauthorized use of a trademark constitutes unlawful infringement, at least eight (8) non-exhaustive factors are considered, including: (a) the strength of the mark; (b) degree of similarity between marks; (c) proximity of the products; (d) likelihood that senior user will bridge the gap between the goods; (e) actual confusion; (f) junior user's bad faith; (g) quality of the junior user's product; and (h) sophistication of the relevant consumers. Polaroid Corporation v. Polarad Electronics Corp., 287 F. 2d 492 (2nd Cir. 1961).  Additionally, the Court will consider if the use is "likely to dilute" the fame of a famous trademark through either blurring or tarnishment. 15 U.S.C. § 1125.

Even when grounds for a potential infringement or dilution claim exist, certain defenses are available to an artist depicting the trademarks in an artistic creation. Primarily, the artist may be able to defend the claim on the grounds of "fair use" of the trademark. However, fair use is an affirmative defense, which means that it is only asserted once the artist has been sued in court.

An illustrative case involving the use of trademarked products as part of an artistic creation is Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003). In that case, photographer Thomas Forsythe developed a photographic series entitled "Food Chain Barbie," which depicted Barbie dolls in various disturbing and provocative positions, such as being roasted in an oven or in a blender and fondue pot (see below):

Copyright Thomas Forsythe

After being sued by Mattel, Forsythe argued that his creative images attempted to "critique [ ] the objectification of women associated with [Barbie]," and to "lambast [ ] the conventional beauty myth and the societal acceptance of women as objects because this is what Barbie embodies." Id.

The Ninth Circuit Court of Appeals found that Forsythe's use of the Barbie dolls in this manner constituted fair use, as it was transformative, defining this requirement as: "add[ing] something new, with a further purpose or different character, altering the first with new expression, meaning, or message." Id.

The Ninth Circuit explained that "when [trade]marks 'transcend their identifying purpose' and 'enter public discourse and become an integral part of our vocabulary,' they 'assume[ ] a role outside the bounds of trademark law.' Where a mark assumes such cultural significance, First Amendment protections come into play: '[T]he trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function.'" Id.

To try to address concerns about exposure to claims for trademark infringement, some artists incorporate disclaimers in their catalogs or on websites that advise the consumer that the use of the trademarks is not licensed or authorized by the trademark owner. While a disclaimer can help address possible confusion, it does not guarantee freedom from liability.

Ultimately, to prevail in convincing a Court that a particular use of a trademark in a painting or photograph is sufficiently transformative to shield that use behind the First Amendment, will depend on the facts of the given case.

The legal outcome, much as the appreciation of the pop art itself, may very well depend on the viewpoint of the beholder.

The Gloves are Off: Rawlings Sues Wilson for Trademark Infringement

In St. Louis, Missouri, Rawlings Sporting Goods has filed a federal lawsuit against competitor Wilson Sporting Goods for displaying a baseball glove with gold-colored webbing and stitching in its promotional materials.  Rawlings alleges the product violates its Gold Glove Award trademarks.

Wilson's 2012 promotional materials had shown Brandon Phillips, a second baseman with the Cincinnati Reds, holding a Wilson-brand baseball glove with metallic gold-colored webbing, stitching and lettering, according to Rawlings' Complaint.

After Phillips won a Gold Glove Award in 2011, Rawlings alleges Wilson supplied the Major League Baseball player with a glove made by Wilson with gold coloring that Rawlings alleges violates its trademarks.

Eighteen Gold Gloves are awarded each year (with the exception of 1957, 1985 and 2007), one at each of the nine positions in each league.

Rawlings claims that it owns the trademarks for the words "Gold Glove Award" and for the distinctive gold-colored baseball glove that is the centerpiece of the award.

In addition to the award, Rawlings supplies winners with baseball gloves with metallic gold distinguishing marks.  Since 1957, the Complaint notes that Rawlings has distributed 981 Gold Glove Awards.

"(Wilson's) unauthorized use of the Gold Glove Marks dilutes and is likely to dilute the distinctiveness of these marks by eroding the public's exclusive associations and reputation of the marks, and otherwise lessening the capacity of the marks to identify and distinguish Rawlings' good and services," Rawlings' Complaint alleges.

It is not clear if Wilson sold any of the allegedly infringing gloves in commerce, but its use of a copycat gold glove as a promotional item may be sufficient to violate the Lanham Act if the Court finds that such use was likely to cause confusion and/or dilute the famous Gold Glove Marks.