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Willa-n-Wella, Living-n-Harmony Now

Posted in Branding, Famous Marks, Infringement, Law Suits, Trademark Bullying, Trademarks, TTAB

The New York Times has been following a trademark battle between Christy Prunier’s body and beauty care start-up business apparently geared toward preteen and teenage girls (Willagirl LLC) and industry giant Procter & Gamble, owner of the well-known, if not famous, more than century old WELLA hair care brand, with U.S. trademark rights dating back at least to the early 1930s.

The dispute has the most important hallmarks of what popular culture has dubbed “trademark bullying“: Big Business v. Small Business, Established v. Newcomer, basically, David v. Goliath.

For me, however, the trademark bullying label ought not be applied here, especially since, in my estimation, P&G wins the dispute over the right to register, at the Trademark Trial and Appeal Board (TTAB) (where the litigation between the parties started), probably 9 out of 10 times.

It’s good to see that Lara Pearson over at The Brand Geek Blog agrees this is not a bona fide case of “trademark bullying.” Seattle Trademark Lawyer similarly writes this isn’t the best example of “trademark bullying.” What do you think, legitimate trademark enforcement or overreaching?

From my vantage point, the goods clearly overlap and those that don’t are closely related, and the only difference between WILLA and WELLA is a short vowel sound between “i” and “e” — when spoken, kind of like the difference between “ick” and “eck” when someone is about to hurl, so let’s call it a distinction without a meaningful difference.

In a dispute over the right to register a trademark – at the TTAB anyway – upper case v. lower case won’t matter, distinctly different associated designs won’t help (because the words will be considered dominant), differing trade dress won’t be considered, and differing actual channels of trade won’t matter either, as the federal registrations owned by P&G for the WELLA brand and mark don’t specify any channel of trade limitations. As a result, all reasonable channels of trade for hair care products will be presumed, leading to a direct overlap of the channels of trade.

Perhaps this explains why Ms. Prunier took the fight to federal district court and sought suspension of the trademark opposition proceeding before the TTAB. This approach is actually a very smart strategy if you can afford it, or, if you have an insurance policy that will defend against any likely counterclaim for trademark infringement. Here is a copy of Willagirl’s successful motion to suspend the TTAB proceeding, which includes a history of the dispute, a copy of the declaratory judgment action filed by Willagirl in federal district court, and P&G Wella’s counterclaim for infringement and dilution, among other state law claims.

The strategy apparently worked, although at great financial cost to Ms. Prunier, because just a couple of days ago, the New York Times reported that the Wella/Willa trademark dispute between Ms. Prunier’s company and P&G has settled prior to a trial being held on the merits.

The settlement is reported to be confidential, as they always are, so we’ll have to monitor the trademark filings and the market place to determine what kinds of restrictions P&G may have imposed on Willagirl. I suspect we’ll never know whether money changed hands, and if so, how much, and the direction it flowed, but if I had to hazard a guess, it seems likely to me that Ms. Prunier won’t be absorbing the entire cost of the estimated $750,000.00 in attorneys fees she has incurred to date.

So, if Willagirl were to try this case ten times in federal district court, how many times does she win, with products looking like these?

 

Without knowing anything about what was learned by the parties during discovery, and assuming there are no smoking guns on either side, I’m thinking Willagirl wins no more than three times.

Let’s just say, settlement is the price of certainty — for both sides.

  • Carroll Ray

    I agree that this is not a case of bullying by P&G. They don’t give up their right to trademark protection just because they’re a huge corporation.
    I wonder who advised Ms. Prunier in the first place. Surely, any reasonable trademark search would have uncovered this conflict, in which case she made the choice to tug on Superman’s cape and submit the name for trademark registration. Either she didn’t know about the conflict and went ahead, or she did know and chose to move forward anyway.
    I’m surprised that the USPTO granted her the registration, and to me, they share culpability in this mess.

  • http://nancyfriedman.typepad.com Nancy Friedman

    Typo? I believe it should be “Willagirl’s successful motion,” not “Wellagirl’s” (fourth graf from end).
    Sort of reinforces the confusion argument, doesn’t it?

  • Steve Baird

    Nancy, yes, thanks for the close read, I fixed the typo. It does indicate that at least I was confused!

  • http://www.linkedin.com/in/kelliproia Kelli Proia

    I agree that this is not a case of “trademark bullying”. Are we supposed to label every large company a ‘bully’ just because they are asserting their IP rights against a small start-up? No. P&G would have been negligent if they hadn’t defended their rights to a trademark that they’ve owned for decades. In this case, there clearly is an overlap in at least some of the goods.

  • http://www.BrandGeek.net Lara Pearson (Brand Geek)

    Thanks for the shoutout, Steve and for the settlement update.
    I posted a link to your coverage on BrandGeek’s FB page.

  • http://www.linkedin.com/in/banoonoo Anna Schibrowsky

    Great article, Steve.
    In my experience tutoring ESL students, the difference between a short E and a short I is very difficult to discern. Add in accents and typos and you definitely have a recipe for brand confusion.
    As I skimmed Willagirl’s successful motion to suspend the TTAB proceeding, I was stunned that there was no mention of trademark research by Willagirl’s owner or her attorneys, especially considering it can be done on the uspto.gov website. I was also stunned that consumers are supposed to differentiate between “a girl’s” face and hair on the Willa bottle and the face and hair of “an adult woman” on the Wella bottle.
    I think casual consumers of Wella would see the Willa packaging and assume Wella has rebranded itself as an expanded line for a younger market.

  • http://www.andrisandassociates.com Andris Pone

    Thanks for this, Steve.
    I gather that one vital standard is whether the marks are “confusingly similar.” To my mind, the sound made by “Willa” is in fact meaningfully different from that of “Wella”. Of course, this is a highly subjective appraisal by nature.
    Related on the matter of confusion is Anna’s comment, that “casual consumers of Wella would see the Willa packaging and assume Wella has rebranded itself as an expanded line for a younger market.”
    This suggests to me that in order to prevail, Willa must prove that Wella could not possibly, at any time in the future, come up with any type of brand extension that will make it confusing with Willa.
    Is this the case? It would be one helluva burden for Willa – one I would argue is unfair.

  • Michelle Geissbuhler

    I agree that “Wella” and “Willa” sound sufficiently alike (especially given regional pronunciation tendencies) that confusion is likely. And I agree that this is not ‘trademark bullying’ ‚Äî protections are established for a reason.
    My question: why didn’t Ms. Prunier simply use her brand’s full name? Willagirl is distinctly different from Wella (in my humble if-not-legal-since-I’m-not-a-lawyer opinion) and seems more brand-right as well ‚Ķ unless she’s looking to future brand extensions (not to be confused with hair extensions) and plans to market to grownups, in which case I wonder whether she did this deliberately, to capitalize on the Wella brand?

  • john troll

    Sorry to be so late in commenting. But I must disagree. It was P&G that got handled. Notice that the PTO did not cite Wella against Willa. Think that was an accident? Think the PTO wants to deal with an upset P&G unless they have concluded no likelihood of confusion? More importantly, Willa’s story is compelling. I’d bet a ham sandwich it was P&G who was anxious to settle. It was P&G who paid the legal fees that were not nearly as much as Ms. Brunier floated up the the NYT. And with the same story Willa wins 7 or 8 out of 10 times.

  • Steve Baird

    John, it’s never too late, thanks for offering your insights and perspective. I guess we’ll need to agree to disagree on this one. Reasonable minds can differ, right?