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.