What struck me most about today’s N.Y. Times article about a start-up cosmetics company focused on pre-teens, WillaGirl LLC, and “trademark bully” Procter & Gamble and its subsidiary, The Wella Corporation, was not the similarity of the marks or their intended demographics, but the legal fees that WillaGirl had reportedly rung up to date: $750,000 — before trial.
Some may cheer that a start-up would spend the money to protect its right to use its mark and lament the fact that other start-ups may not have the funds to protect their right to stand up to big corporations. But $750,000 is a lot of money. Should WillaGirl have spent its $750,000 in re-branding instead of litigating a claim that it may not even win?
The applicable test for infringement requires the court to consider the:
- strength of the mark,
- similarity between the marks,
- proximity of the products,
- likelihood that the first owner will bridge the gap (make a product similar to the second user’s products),
- actual confusion,
- good faith of the second user in adopting the mark, and
- quality of the second user’s product, and the sophistication of the consumers.
See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). In determining whether there is infringement, the court may also consider other variables. (The N.Y. Times article refers to this test as “squishy.” I would say that it is fulsome and allows the court to balance the equities.)
An analysis based solely on a review of the facts set out in the N.Y. Times article and the public complaint and counterclaim suggest that: 1) the Wella mark is strong, 2) Willa and Wella sound and look alike (only one letter is different!), 3) both brands are for cosmetic products for women (albeit of different age group . . . for now), 4) there is a likelihood that Wella or its parent company Procter & Gamble will “bridge the gap” into the preteen market, and that 5) WillaGirl was on constructive and actual notice of the Wella mark.
Because I do not have access to the facts of this case, I have no basis to comment on the three additional factors: whether there is evidence of actual confusion, the quality of either companies’ products, or the sophistication of the relevant consumers. But even without these three additional factors, the Wella Corporation’s claim seems to pass the frivolous test for infringement. In other words, this claim is hardly a slam dunk winner for WillaGirl.
And the Wella Corporation has also brought a claim for trademark dilution, which may be an even easier standard of liability for it to meet. If the Wella Corporation can show that “Wella” is a famous and distinctive mark, then, under the Trademark Dilution Revision Act of 2005, it may establish an actionable claim for trademark dilution by blurring if it can show that an “association arising from the similarity between a mark . . . and a famous mark that impairs the distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(2)(B). Again, Wella and Willa are fairly close in look and sound. Could Wella show that WillaGirl sounds like a new line of Wella products for the pre-teen set?
So the question that I keep turning back to is why didn’t the lawyers settle this dispute before the tab reached $750,000?
Perhaps the lawyers counseled in favor of settlement but the client refused to budge from her chosen brand name. In the N.Y. Times article, the founder of WillaGirl said that she thought about changing the name but decided against it. But maybe she would have thought differently if her lawyers had made a better case for agreeing to rebrand by setting out in stark terms the cost of litigating the matter, the likelihood of winning, and the cloud of uncertainty that would weigh over her product until the case is resolved. Or maybe she wouldn’t have.
This case strikes me as one that good lawyering could have resolved well before the eve of trial. But in that case, the legal fees would not be as striking.