Question for the day, how common is the given name Elle? I’m really not sure, I don’t believe I’ve ever personally known anyone with that name, and Mongabay doesn’t even include Elle in its listing of girl’s first names, but it does rank Ella (210), Elena (412), Ellie (1198), Elly (2802), and Ellamae (3514) among the top female first names in America.
Is Elle really less popular than Ellamae in America? What, no parents inspired by the likes of Elle MacPherson? Elle King? Elle Fanning? No doubt, as a surname, Elle is pretty rare, it appears, but I’d expect to see Elle on the listing of first names somewhere above Ellemae, wouldn’t you?
Enter fashion designer Elle Sasson, opposed by Elle Magazine at the TTAB of the USPTO for more than two years now. Last week, Elle Sasson won her bid to have a federal district court in New York hear her complaint that she has done nothing wrong in using and attempting to federally-register ELLE SASSON as a trademark for clothing, and that ELLE Magazine is wrong to assert claims of trademark infringement and dilution allegedly in violation of the ELLE trademark.
Meanwhile, the TTAB opposition is suspended, pending the outcome of the district court action.
Sending a cease and desist letter alleging trademark infringement and/or dilution will typically trigger the recipient’s right and ability to remove the cloud of uncertainty surrounding its use, by bringing a declaratory judgment (DJ) action to have a federal court decide it once and for all.
This declaratory judgment step often guarantees an actual lawsuit will go forward and that the allegations in the cease and desist letter will be litigated by the parties in court because the sender of the cease and desist letter will frequently prove it is serious by answering and then counterclaiming for trademark infringement and related relief. We’ll wait and see if ELLE does.
But sometimes, the party sending the letter, says in effect, “not so fast,” or “just kidding,” and tries to dismiss the DJ action by arguing there is no present, imminent dispute that requires the court’s immediate intervention. The ruling from last week rejects ELLE Magazine’s contention that the existing dispute is really limited to the right to register and belongs at the TTAB:
“The plaintiffs [including Elle Sasson] have a concrete business interest in determining whether their current and future use of ELLE SASSON exposes them to liability. [ELLE Magazine] has claimed infringement and dilution. Each time the plaintiff’s use their allegedly infringing mark, they increase their exposure to potential damages. Delaying consideration of these claims pending the outcome of the TTAB proceeding ‘undercuts the purpose of declaratory relief’ by forcing the plaintiffs ‘either to abandon use of trademarks’ they have been using in commerce ‘or to persist in piling up potential damages.’ Entering judgment will settle the infringement and dilution claims and thereby relieve the plaintiffs from the uncertainty looming over their fashion business.”
If ELLE really wanted to “un-ring the bell,” or “break the wrist and walk away” from its previous allegations regarding Elle Sasson’s allegedly infringing and diluting use, ELLE needed to moot the district court dispute over the questioned use by unequivocally removing the threat of suit based on Elle Sasson’s current conduct.
Stay tuned for ELLE Magazine’s next move, we’ll see whether it counterclaims for trademark infringement and dilution, or whether it is able to work something out with Ms. Sasson.