Imagine my surprise when I received my daily IP update from Patently-O and read an article noting that the Chippendale Cuffs and Bowtie were not worthy of incontestable trade dress status.  (Incidentally, Professor Dennis Crouch writes the Patently-O blog and I find it to be a very informative intellectual property blogs.  Another recommendation is IPWatchdog written by Gene Quinn.) 

Back to the matter at hand - a link to the opinion from the Federal Circuit can be found here.  This matter arose because Chippendales sought registration of the “Cuffs and Collar” costume as trade dress that is “inherently distinctive.”  In 2003, however, the Examining Attorney at the Trademark Office found that the “Cuffs and Collar” outfit was only entitled to registration because of the mark’s acquired distinctiveness, not because the mark was inherently distinctive.  The real issue, however, revolves around whether or not the mark could be considered incontestable.  A mark can be considered incontestable if it is continuously registered on the Principle Register at the Trademark Office for five years.  Finding that the mark had acquired distinctiveness, instead of being inherently distinctive, essentially adds five years to the clock for Chippendales (a mark can acquire distinctiveness by being registered for five years and, therefore, it would take another five years for the mark to become incontestable). 

As indicated by the Federal Circuit, an incontestable trademark is treated as conclusive evidence of the validity of the trademark, as well as its registration, ownership, and the exclusive right of the owner to use the mark in commerce.  This was very important for Chippendales as they were about to get involved in a trademark infringement action.  When getting into a trademark infringement suit, it is preferable for that the trademark in question have incontestable status.  Although this is, by no means, a requirement, it essentially eliminates one of the steps in litigation.  For example, if you are a trademark owner and you file a trademark infringement suit, you can be sure that one of the first things coming back your way will be a counterclaim requesting that the court invalidate your trademark for any number of reasons.  With incontestable status, however, most of the bullets will be taken out of that gun. 

I found this case to be a bit entertaining and thought that many of our readers – especially you females out there, would enjoy it.  One of the key points that I would like to make with this brief article, however, is that incontestable status is not automatically granted.  It is something that you must request the Trademark Office to issue.  If you are a trademark owner, and your trademark has been issued on the Principle Register for more than five years, please look into whether or not you have requested incontestable status for your trademark.  This can only enhance your protection, especially if you are put in the situation where you will have to litigate to enforce your trademark rights.

Although this happened a few weeks back, I still get a kick out of this story, and I’ve been hearing more and more about it.  The Naked Cowboy (Robert Burck) has sued The Naked Cowgirl (Sandy Kane) for allegedly infringing on his trademark.  I am not too sure what his trademark is, but I suppose it is a nearly naked person strumming a guitar in the middle of a major metropolitan area and generating revenue by getting television coverage on the likes of The Today Show.  Before you ask, the answer is no.  I don’t get it!  A lot of you ladies out there might get it, but not me.

It sure is cold out here....shrinkage???

The Naked Cowboy earned his fame by walking around New York City in nothing but his cowboy boots, cowboy hat and a pair of draws while strumming his guitar and, in the process, entertaining New Yorkers.  He’s not a bad looking man, and he has a body that is ever so slightly nicer than mine (insert fat joke here) so naturally, he was able to make some money off of his bit.  As the saying goes, if you’ve got it, flaunt it.  I’ll stick to writing these articles.  I’ll leave the naked lawyering to someone else. 

I don't see why they can't co-exist!

I did a quick bit of research and I did not find a registered trademark for “The Naked Cowboy.”  I am truly wondering what the cause of action is here.  Mr. Naked Cowboy is likely asserting common law trademark causes of action, and it attempting to stop someone else from profiting from his unique act.  At this point, it will be up to a court to decide whether or not trademark protection can be afforded for his act.

“A day without royalties is like a pot without a single drop of honey left inside.”

A U.S. District Judge dismissed the copyright suit brought by the heirs of the licensee for the Winnie the Pooh character, Stephen Slessinger.  This case has special meaning to us in Florida for a number of reasons.  Of course, the mouse house is a huge source of revenue for us, and Slessinger’s widow, who originally brought the copyright suit against Disney, lived in Tampa for years.  Slessinger originally acquired the rights to our beloved Pooh Bear in 1930 from author, A. A. Milne.  Slessinger’s widow, who lived in Tampa for a number of years, licensed the rights to Pooh to Disney in 1961.

The Late Mr. Slessinger

Stephen Slessinger, Inc. (SSI) originally sued Disney alleging that it breached the original licensing deal by attempting to avoid paying the family more than $700 Million in royalties.  SSI alleged that Disney comingled revenues generated by Pooh with Disney’s general revenues to avoid paying the royalties.  That suit was dismissed in 2004 when the court ruled that the evidence relied on by SSI was improperly obtained through misconduct by a private investigator.  To be exact, the dismissal of the suit was one of the sanctions issued by the court.

On September 25, 2009, U.S. District Court Judge Florence-Marie Cooper granted Disney its motion for Summary Judgment and tossed the case.  (You can read the full text of the Judge’s Order here.)  In May, 2009, the court granted Disney’s motions for summary judgment on the claims for breach of contract, bad faith, fraud, and its claim for declaratory relief.  Among the issues that the court decided in this motion for summary judgment were copyright infringement, trademark infringement and trade dress infringement.  The court summarily granted Disney’s motions, exhibiting much frustration over SSI’s attempts to salvage a case that had obviously gone south years ago.

Technically, the case is not completely over, but it is not looking good for SSI.  A Disney spokesperson told Reuters that SSI still had a claim against Disney pending before U.S. Patent regulators (source).  Personally, I am not sure what patent regulators would have jurisdiction over the Pooh character, but we will do some more digging into this to find out.  We will keep an eye on this case to see if any appeals are filed.

"Wake me if they file an appeal."