Delay in Resolving ABSOLUT Trademark Dispute Raises Thorny Issues

The Everett, Washington hair salon's name/logo

Self-help guru Napoleon Hill once wrote that "procrastination is the bad habit of putting off until the day after tomorrow what should have been done the day before yesterday."  A number of parties involved in a trademark dispute in the state of Washington may agree with that statement more than they would care to.

According to recent reports, when Jesse Skittrall purchased the small Absolut Hair and Makeup salon in Everett, Washington in 2009, he was informed by Gayle Pratt, the former owner of the salon, that Vodka giant Absolut had sent a formal cease and desist letter in 2005, but didn't follow up on its demand that the salon change its name.

Consequently, Pratt evidently concluded that the matter was not being pursued by the vodka maker, and the hair salon management changed hands.

However, at the end of July 2013, the vodka maker finally followed up, and reportedly gave Skittrall until January 1, 2014 -- 6 months -- to completely change the salon's name, or else face a federal lawsuit for trademark infringement.

Skittrall has appealed to the community to raise money, and appeared on local radio stations, complaining that the vodka company had "come out of nowhere."

On GoFundMe.com, Skittrall apparently seeks as much as $20,000 to fund the name change, but as of today, has raised only $125.  It is not clear why it would cost $20,000 for the business to change its name, but the salon would obviously need new signage, a new website and new business cards.

The Vodka Maker's Trademark

On the crowd funding site, Skittrall claims that "I bought the business with this name and existing signage and was not aware of any trademark issues."

But the former owner disputes Skittrall's characterization, saying that she fully informed him of the unresolved trademark dispute back in 2009.

But what of the vodka maker's apparent delay in following up?

Precedent from the Ninth Circuit Court of Appeals, which governs Washington, lays out a clear duty for a trademark owner to act diligently once it has sent a cease and desist letter that has become unresolved.

Otherwise, the trademark owner might face the possibility that its delay in protecting its rights may rise to the level of being "estopped by laches."  The doctrine is sometimes just referred to as "laches," which comes from the French for "laziness."

The Latin phrase "Vigilantibus non dormientibus æquitas subvenit (Equity aids the vigilant, not the sleeping ones (that is, those who sleep on their rights))" is often quoted to help explain the doctrine.

In other words, the vodka maker's delay in pursuing the 2005 matter against the hair salon could have led the former and new owners to reasonably infer that the alcohol beverage company had lost interest in protecting its rights in this instance.

To the extent that the salon owners relied upon that delay to their detriment and suffered prejudice, courts may hold that delay against the trademark owner, not the salon.

The Ninth Circuit Court of Appeals had said in Brookfield Communications v. West Coast Entertainment in 1999:

"Although we have applied laches to bar trademark infringement claims, we have done so only where the trademark holder knowingly allowed the infringing mark to be used without objection for a lengthy period of time. See E–Systems, Inc. v. Monitek, Inc., 720 F.2d 604, 607 (9th Cir.1983). In E–Systems, for example, we estopped a claimant who did not file suit until after the allegedly infringing mark had been used for eight years where the claimant had known of the infringing use for at least six years. See id.; see also Carter–Wallace, Inc. v. Procter & Gamble Co.,434 F.2d 794, 803 (9th Cir.1970). We specifically cautioned, however, that “had defendant's encroachment been minimal, or its growth slow and steady, there would be no laches.” E–Systems, 720 F.2d at 607; accord Carter–Wallace, 434 F.2d at 803 n. 4."

In this case, the delay would appear to be from 2005 to 2013:  approximately eight years.  There is no clear evidence of progressive encroachment, as the local hair salon appears to be largely the same as it was in 2005, despite having new management.

Furthermore, Washington's statute of limitations may also apply here, which enforces a three year statute of limitations to trade name disputes.

Consequently, the vodka maker may face a problem if the hair salon simply refuses to change its name, and invokes these doctrines in its defense. 

The lingering problem for the salon, of course, is that estoppel by laches is a defense that can only be asserted in a lengthy court proceeding, after factual discovery has been exchanged.  And invoking such equitable defenses obviously costs time and money, and litigation comes with no guarantees.

In conclusion, had all the parties more clearly resolved their original dispute back in 2005, more costly headaches for all involved might have been avoided.

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"Stop Islamization" Trademark Refused: Applicants Decry Political Correctness in Appeal

Image on AFDI Website

A U.S. federal trademark application for an anti-sharia law campaign known as "STOP ISLAMIZATION OF AMERICA" was filed by a group called the American Freedom Defense Initiative (AFDI), a pro-Israel group founded by controversial bloggers/commentators Robert Spencer and Pamela Geller.

The AFDI had been behind a grassroots movement that sought to stop the building of a mosque in lower Manhattan, near the Ground Zero World Trade Center site, claiming that the act would offend 9/11 victims' families.

Critics such as the Southern Poverty Law Center and the Anti-Defamation League have accused the AFDI of being an anti-Muslim hate group, alleging that it promotes a conspiratorial anti-Muslim agenda under the guise of fighting radical Islam" and "seeks to rouse public fear by consistently villifying the Islamic faith and asserting the existence of an Islamic conspiracy to destroy 'American' values." 

The Trademark Office refused the group's application for a trademark on the basis that it "consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols."

The Trademark Office ruled that it must apply a two factor legal test, asking: (1) What is the likely meaning of the matter in question; and (2) is that meaning referring to identifiable persons, institutions, beliefs or national symbols, and whether that meaning is disparaging to a substantial composite of the referenced group.

The Trademark Examiner concluded that, applying this test, the likely meaning of ISLAMIZATION refers to the act of converting to Islam, and that the proposed mark effectively disparages Muslims by implying that conformity to Islam is something that needs to be stopped.

The Trademark Office cited several cases supposedly supporting its conclusion.

However, on further examination, the cases that the Examiner cited were not necessarily relevant or helpful to its case, such as when the Trademark Office found THE MEMPHIS MAFIA for entertainment services not to be matter that disparages Italian-Americans or bring them into contempt or disrepute.

The Trademark Office had further cited the controversial proceedings finding that the WASHINGTON REDSKINS trademark should be cancelled on the same grounds.

The group appealed the Examiner's final refusal to the Trademark Trial and Appeal Board (TTAB), which affirmed the rejection.

Now, the group has appealed this decision to the United States Court of Appeals for the Federal Circuit, which hears appeals from final Trademark Office refusals to register trademarks.

In the appeal brief, the AFDI's lawyer argues that:

"Appellants [Geller and Spencer] are sympathetic to the USPTO’s politically correct sensitivities enticing it to protect Muslims and indeed Islam itself from even the slightest hint of disparagement in the form of public criticism, especially in the post-9/11 age with global terrorism conducted daily in the name of Islam and the Arab Spring featuring the Muslim Brotherhood’s Islamisation program for Egypt and elsewhere melting into murder and mayhem.

The problem with these sensitivities as applied to the denial of Appellants’ Mark is that the USPTO’s beef is not with Appellants or their Mark, but rather with terrorists who claim to speak in the name of all of Islam and all Muslims.  Appellants’ Mark does not.  

One of the AFDI's NYC MTA Advertisements

'Stop the Islamisation of America' has a specific meaning that Muslims and non-Muslims in America and indeed throughout the West embrace if they treasure liberty and religious freedom for all.  In a zeal to take on the role of parens patriae and to protect Muslims from every insult, the USPTO and the TTAB have both ignored the factual record and have simply assumed meanings and understandings of the terms of the Mark that have no factual or evidentiary basis.  There is no substantial evidence to support the TTAB’s Decision or the USPTO’s denial of the Mark."

The USPTO has yet to file its response.

The AFDI has seen its fair share of federal litigation and previously triumphed. For example, in a federal lawsuit that it filed against the New York Metropolitan Transit Authority (MTA), the group succeeded in forcing the MTA to carry its advertisements on the sides of New York City buses and in the subways.

The MTA had rejected the group's advertisements, purportedly on the basis that they "demeaned" Muslims.  

The New York federal court found that the MTA had violated the Group's First Amendment rights, and ordered the MTA to run the ads.