Tuesday, April 29, 2008

Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing

Finding that, at the time of Respondent's trademark registration in 2000, the mark TWIGGY pointed uniquely to Petitioner Lesley Hornby a/k/a Twiggy, the Board granted her Section 2(a) petition for cancellation of Respondent's registration for the mark TWIGGY for "clothing, namely, children's pants, tops, slacks, skirts, vests, sweaters, shirts and blouses." The Board denied Respondent TJX's laches defense and also dismissed Petitioner's Section 2(d), dilution, and fraud claims. Lesley Hornby a/k/a Lesley Lawson a/k/a Twiggy v. TJX Companies, Inc., 87 USPQ2d 1411 (TTAB 2008) [precedential].


The Board found that Twiggy was not only an international sensation in the 1960s, but that through her various entertainment activities and promotional efforts, she has "built on the extraordinary initial reputation and celebrity" so that she and her name Twiggy "had sufficient fame and reputation in 1999 and 2000" that "purchasers of children's clothing would, upon seeing the mark TWIGGY on such goods, presume an association with her." [TTABlog note: Twiggy tells her story in her testimony, the transcript of which is found here.]

Laches: The Board first considered Respondent's laches defense. It observed that laches is not an available defense to Petitioner's fraud claim, but it is available with regard to the likelihood of confusion and Section 2(a) claims. Moreover, in a ruling of first impression, the Board held that laches is an affirmative defense to a dilution claim. Nonetheless, Respondent TJX failed to provide any evidence that Petitioner's delay in seeking cancellation caused and detriment, and so the Board dismissed this defense for lack of proof.

Likelihood of Confusion and Dilution: These claims were dismissed because Twiggy stopped selling goods in the USA under the mark TWIGGY in about 1970. There was no evidence of her use of the mark TWIGGY for clothing between 1970 and January 29, 1997, the date of filing of the application that issued as the subject registration. Petitioner provided no excuse for this period of nonuse, nor did she provide any evidence of an intent to resume use. Consequently, the Board found that, by 1997, she had abandoned her common law rights in the mark TWIGGY for clothing. Because Twiggy could not prove priority of use, her likelihood of confusion claim failed, and because of the abandonment, she could not prove that her mark was famous at the time of Respondent's filing.

Fraud: Twiggy's fraud claim was based on the argument that Respondent submitted a false declaration when it filed its application because it "was fully aware that Twiggy had and has rights to use the mark TWIGGY," and the it "was fully aware that applying a celebrity's name to clothing may be likely to cause confusion, to cause mistake or to deceive." The Board, however, found no evidence that Respondent knew that confusion would be likely. Indeed, Petitioner had stopped making trademark use of TWIGGY in the USA in 1970.

Moreover, there is no case holding that the language of the declaration in an application "requires an individual to reveal third-party use other than trademark use, such as a person having a particular name." Therefore, even if Respondent knew that the mark TWIGGY would create a false connection, the Board could not find that its declaration was an intentionally false statement.

Finally, in any case, the Examining Attorney was aware that Twiggy was the name of a British actress and personality, and in fact issued a 2(a) refusal on that basis. Thus Respondent's failure to identify Petitioner "can hardly be considered to be material to the Examining Attorney's decision to allow the application."

Respondent's Specimen of Use

Section 2(a): Respondent argued that its mark TWIGGY would not be recognized as Petitioner's name because "petitioner's name or identity is not of sufficient fame or reputation that consumers on seeing it on children's clothing would presume a connection with petitioner." [TTABlog query: why, pray tell, did Respondent choose that mark?].

The Board noted that the question was whether Twiggy had sufficient fame and/or reputation as of July 4, 2000, the day the challenged registration issued. The answer was yes.

"Petitioner is not simply a model who made a name for herself more than 30 years ago and then disappeared from public view. On the contrary, through the years she has continued to play a public role, and has appeared before the public in vehicles which gave her significant national exposure.
"These various entertainment activities, and the promotional efforts surrounding them, have successfully kept her name before the U.S. public, and have built on the extraordinary initial reputation and celebrity that was created in the period from 1967-1970."

The Board took judicial notice of the entry for "Twiggy" in The American Heritage Dictionary of the English Language, published in 2000: "Originally Lesley Hornby. British model who epitomized the ultrathin look popular from 1966 to 1976." And the Board found it significant that in 1999 the Franklin Mint asked Twiggy "to license her name and likeness for a collectible doll," to join a collection that included Jackie Kennedy, Princess Diana, Marilyn Monroe, and Elvis Presley.

In sum, the Board found that "purchasers of children's clothing would, upon seeing the mark TWIGGY on such goods, presume an association with her."

Respondent lamely argued that people who knew of Twiggy in the 1967-1970 time period are too old to buy children's clothing, and there is "no evidence that 'a new generation of adult consumers' would be aware of the model Twiggy." The Board tore that argument to shreds, noting, inter alia, that grandmothers still buy children's clothing, and that "fathers may purchase clothing for their children, and they do not have the biological issues that women do."

Finally, the Board found that the name "Twiggy" is unmistakably associated with Petitioner and points uniquely to her. Respondent offered dictionary definitions of the word "twiggy" as meaning "resembling a twig, as in slenderness or fragility." However, the Board observed, the requirement that the mark point "uniquely" to Petitioner does not mean that the term TWIGGY must be unique. There is nothing in the record to suggest that TWIGGY for clothing would have the proposed dictionary meaning. In fact, the obvious connection between models and clothing further supports the conclusion that the mark TWIGGY for clothing points uniquely to Petitioner.

Considering all the evidence, the Board granted the petition for cancellation on the Section 2(a) ground.

Text Copyright John L. Welch 2008.


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