Trademark law is so straightforward. Nevertheless, it seems like you can’t swing a dead cat without hitting a lawyer who has no clue whatsoever.
Oklahoma winemakers Girls Gone Wine is suing Mantra Films in response to a cease-and-desist letter from the “Girls Gone Wild” producers.
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At issue is whether the three women behind the wine brand can keep their already trademarked name. Girls Gone Wine has been trademarked since February 2007.
“We will crush them,” “Girls Gone Wild” founder Joe Francis told a reporter from jail in Reno, Nev. “This is blatant trademark infringement. It just backs up everything that people have tried to do to me over the last few years to take advantage of me and we’re tired of it.”
The women went to federal court after getting a letter in July from a Mantra Films attorney demanding they “immediately cease and desist any and all use” of the winery’s name. The letter explained Mantra Films was prepared to take legal action if the women kept using the name.
The women struck first, reportedly so the issue could be resolved in court in Oklahoma rather than California.
“It always makes your gut clinch when you get that kind of thing,” owner Michelle Finch said. “We’re hopeful that it will all work out. If not, we’ll just deal with that, too, if it ever comes. We’re here. We’re here to stay.” (source)
The first person that Mr. Francis needs to fire is his publicist. I’m not sure if his “we will crush them” is a tribute to Borat or to Nikita Khrushchev, but it made him sound pretty foolish. There is no “crushing” in trademark law. I really hope that he was trying to be funny.
With respect to the potential trademark claim, I can’t see how Girls Gone Wild has a leg to stand on. There is certainly no likelihood of confusion. Francis doesn’t own a “word patent” to the words “Girls Gone.” And, I highly doubt that he can argue that there is a natural zone of expansion here.
