Monday, October 1, 2007

Is Pussycat Dolls Founder in for a catfight over GIRLICIOUS?

In browsing through some recent trademark filings, I noticed an application for the mark GIRLICIOUS. What I found interesting about this mark is that a quick search revealed the same mark for the same type of goods from three different applicants – all filed within 3 months of each other. What’s even more interesting, however, is the story that is unveiled when you start to look more closely at the applications themselves as well as the registrants filing them.

On June 28, 2007, Robin Lee Antin filed a Section 1(b) intent-to-use application for the mark GIRLICIOUS (for 13 different classes of goods, including clothing under Class 25). On September 20, 2007, Pussycat Dolls, LLC (the company apparently established to own and manage the intellectual property of the famed Pussycat Dolls music group) filed twelve separate Section 1(b) intent-to-use applications for the mark GIRLICIOUS, one of which was for various articles of clothing under Class 25. One thing to note – Robin Antin is the founder of the Pussycat Dolls group and is the co-producer/creator of the reality TV show Pussycat Dolls Present: The Search For The Next Doll. According to Wikipedia, there is going to be a season 2 of the show which will search for three women to make up a new all-female group named . . .surprise surprise . . . Girlicious. Click here to see Ms. Antin herself talk about the new season.

Finally, on September 24, 2007, a company named Girlicious, Inc. submitted a Section 1(a) use-in-commerce application for the mark GIRLICIOUS (for clothing) claiming a first use in commerce of July 16, 2005.

Ms. Antin’s application already received a non-final office action on September 21, 2007 (coincidentally, one day after the Pussycat Dolls’ filings). The examining attorney cited two pending applications with earlier filing dates that if registered may create a likelihood of confusion – the first is for the mark COWGIRLICIOUS and the second is for the mark LADYLICIOUS.

With respect to the LADYLICIOUS mark, this is an §66A (Madrid Protocol) application filed by a Swiss limited liability company named kreis3production on October 31, 2006 (the application’s international registration date) for three classes of goods, one of which is clothing under Class 25. The application’s base registration date in Switzerland is May 18, 2005.

However, on March 16, 2007, the PTO issued a non-final action refusing to register the LADYLICIOUS specifically for the Class 25 goods. The examining attorney found a likelihood of confusion with the registered mark LADY LUSCIOUS for women’s clothing – the marks are similar in appearance and in sound, the goods are similar (clothing), the goods will go through the same trade channels (department stores, boutiques, etc.) and are likely to be encountered by the same consumers who are likely to believe the goods derive from one common source. The fact that no response to the office action was filed by the September 16, 2007 deadline seems to indicate that the company is not interesting in pursuing the application further (although they could come back later within two months of abandonment to revive the application).

Regarding the COWGIRLICIOUS mark, the application was originally filed under Section 1(b) on June 14, 2006. The mark was published and received a notice of allowance. The applicant submitted her statement of use on May 31, 2007 – claiming first use in commerce on July 11, 2006. However, the examining attorney notified the applicant on August 21, 2007, that it was refusing to register the mark because the mark, as used on her submitted specimens, was merely a decorative or ornamental feature of the goods and did not serve as a indication of the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

The applicant submitted a picture of T-shirt with the word “COWGIRLICIOUS” in the middle of the shirt. The examining attorney found such use to be more of a slogan and by its size and location in the middle of the shirt would not be perceived as a source identifier or as a trademark which identifies applicant’s goods and distinguishes such goods from those of others. The larger the display of the mark relative to the size of the goods, the more likely that consumers will not view it as a mark. In addition, the location of where the mark is fixed on the goods is a consideration of how it will be viewed by the public. Where consumers are used to seeing a trademark in certain locations on clothing (i.e. collar label for shirts, above or on the rear pocket for jeans), consumers are less likely to perceive the mark as a source indicator when such mark is placed in a location that is less often associated with a brand name (i.e. the breast area of a shirt).

In order to overcome the ornamental rejection, the applicant must --
a) argue and submit evidence showing that the marks has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument);
b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship);
c) amend the application to seek registration on the Supplemental Register; or
d) submit a new specimen showing non-ornamental use.

I doubt that the COWGIRLICIOUS applicant can provide evidence to obtain the mark under 2(f), show that the public identifies the mark with applicant’s other services, or has any other specimens showing non-ornamental use of the mark COWGIRLICIOUS. Her only option is likely to be registration on the Supplemental Register (see previous blog entry here regarding the benefits of registration on the Supplemental Register). The only question is – will she recognize the benefit of having this registration as opposed to no registration at all? She does not have an attorney representing her in the case, and is likely to just forgo registration altogether. Which, as discussed below, is what Ms. Antin needs to hope for to the extent she wants to get a registration for GIRLICIOUS for clothing.

The final hurdle for Ms. Antin would appear to be the application submitted by Girlicious, Inc. While the filing date is after her application (and even after those by Pussycat Dolls, LLC), the application is a Section 1(a) use-in-commerce application claiming use in commerce beginning July 16, 2005, which certainly predates that of Ms. Antin.

But this Pussycat Doll need not roll over and play dead just yet. A review of the specimen submitted by Girlicious, Inc. shows a T-shirt with the word “Girlicious” on the chest. Sound familiar? This application will likely end up suffering the same ornamental rejection as COWGIRLICIOUS. In this case, however, Girlicious, Inc. may have a stronger argument that the mark is an indicator of secondary source (see the company’s official website here).

Should COWGIRLICIOUS be registered (even if on the Supplemental Register), the examining attorney will likely cite the registration against Girlicious, Inc.’s GIRLICIOUS application as grounds for a likelihood of confusion refusal. In such case, Girlicious, Inc. may have to pursue a petition to cancel the COWGIRLICIOUS registration given Girlicious, Inc.’s earlier use in commerce.

But Girlicious, Inc. has other issues to deal with -- a review of its website shows that the company is using the ® symbol next to the mark GIRLICIOUS. However, I was unable to find a federal registration for this mark (either word or design). Misuse of the ® symbol can be grounds for claims of false advertising and can be used as a grounds for the PTO to refuse registration of the mark. See my previous blog entry here regarding misuse of the ® symbol. It could also impact Girlicious, Inc.’s ability to cancel the COWGIRLICIOUS mark should it desire to do so. In addition, according to the Illinois Secretary of State, Girlicious, Inc. was dissolved on November 1, 2005, which not only raises the issue of a dissolved corporation filing a trademark application, but also raises the issue of whether the corporation is capable of suing and being sued in a court of law (which it must be in order to be a “juristic person” that can file a petition for cancellation).

So what’s the bottom line with all of this? While she still has some hurdles to overcome, I suspect that Ms. Antin will ultimately come out the winner in this catfight.

Unless the COWGIRLICIOUS applicant opts for Supplemental Registration, that application will go abandoned and will not be a problem. The LADYLICIOUS mark will not likely be registered (at least not for clothing goods). Finally, Girlicious, Inc., which was probably in the best position to argue that it was the first to use such mark on clothing, may have harmed its case by misusing the ® symbol and not keeping up its annual corporate filings.

Furthermore, given Ms. Antin’s efforts to make the public associate the mark GIRLICIOUS with her and the Pussycat Dolls, she will have some good evidence for a 2(f) acquired distinctiveness argument or that the mark is recognized by the public as a trademark through use of the mark in connection with this new girl group that will undoubtedly be highly publicized.

The GIRLICIOUS applications filed by Pussycat Dolls, LLC likely will be suspended pending resolution of Ms. Antin’s GIRLICIOUS application (where there are conflicting goods and services). But given her intimate involvement with the Pussycat Dolls, I would presume that the two parties will work it out any claims of priority amongst themselves (she may even be the sole member of Pussycat Dolls, LLC, but this I could not confirm).

All this fuss over a mark ending in “licious” would not be complete without some mention of three pending Section 1(b) applications for FEGALICIOUS filed September 25, 2006 for musical programs, clothing, and, surprisingly, ice cream and candies. Just imagine Fergie dancing around in a commercial for FERGALICIOUS ice cream.

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