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Sep 29 2011

Trademark Bully Proctor & Gamble May Have Met Its Match

Its happening all over the country. Large companies are sending cease and desist letters to small new entrepreneurs claiming that their product or service violates the big company’s well-established trademark. Currently I am dealing with 600 such claims brought across the country by one of the largest digital image warehouses in the world. It has a terrible effect on the small company. Work comes to a halt; precious capital, time and energy get spent on analyzing and defending the claim; and the uncertainty of whether you will be allowed to proceed with the name or packaging you selected hangs over the company like a large sword. This new arena of “trademark bullying” is made possible by the internet and the ease with which companies can search for trademark filings and similar company names. Years ago, a company like Proctor & Gamble would have no way of knowing that a housewife in Connecticut was starting a brand of skin care products with a name similar to its hair care line called Wella. But now, at the click of a mouse, they can be come aware of exactly that and Bam! out goes the letter to halt production or face Federal litigation against one of the largest and best-financed businesses on the globe.

The NY Times reported today that next month the little guy, a company that produces products known as “Willa” will be taking its case against P & G to court. Here’s the brief synopsis: Former film executive Christy Prunier developed a line of skin care products for girls in the preteen age bracket after her then 8 year old daughter Willa complained about having to use kiddie soap and related products. So Mom spent a few years researching products and testing them out on Willa’s fellow well-heeled classmates in Manhattan (they now live in Connecticut). Willa’s babysitter had just recently graduated from the Parson’s School of Design and came into the business to design the products’ look. A new business was born – WillaGirl LLC- named after the little girl who revealed a new niche market to Mom. No sooner did the US Patent and Trademark Office award Ms. Prunier the trademark for “Willa” than P & G sent out their guns to warn Ms. Prunier that it “would resort to lengthy and expensive alternative measures” (HINT: really big lawsuit where all your money will be spent!) if she did not drop the name Willa.

Most folks who get these types of claims have few options.They either have to agree to the demand and change the name; let the big company outright buy the name and product if it likes it; or buckle in for a fight. In reality the last two are not even an option for most since they don’t have the money to fight and the big company has no interest in acquiring the name or company. Not Ms. Prunier. Fortunately for her, Willa’s best friend’s Dad was apparently a trademark lawyer who it seems advised her that P & G did not have strong claim and she should fight back.She had the resources to do so and she filed a claim against P & G to have Federal court declare her entitled to operate as “Willa.”

Here is a link to the Times article if you are interested:
http://dealbook.nytimes.com/2011/09/28/a-start-up-takes-on-procter-gamble-over-a-name/?hpw

Since the names are not identical, Willa has to prove that there is no likelihood of confusion; that consumers are not likely to buy “Willa” thinking they are buying “Wella” or a “Wella”-related product. I agree with Ms. Prunier that it is unlikely the two products will be confused. Willa is to be sold in retail outlets; Wella is sold in salons; “Wella” is only hair care products; “Willa” is a full range of products including lip balm, soap and skin lotions. The packaging has some similarities, in that both have a stylized portrait of a young girl as their logo, but the logos themselves do not look like each other.

Kudos to Ms. Prunier for putting up a fight and standing up for her product. In the Times, she is quoted as saying that the story behind the name “was crucial to the brand and any other named lacked authenticity.” That sounds great, but considering that she estimates her legal fees to approach $750,000.00 by the time the trial is done, she is putting her money where her mouth is. P & G acquired Wella for $7 Billion in 2003, so spending a $1 Million to knock out a potential competitor is an easy call for them to make. I am sure that they will argue that if “Willa” is allowed, other brands (from even better financed competitors) may spring up and weaken the Wella mark.

The trial in WillaGIrl, LLC.v. The Wella Corporation starts in October in Manhattan Federal Court. It should be called David vs. Goliath; a story that never gets old.

12 comments

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  1. Willa Wing

    I hope Ms.Prunier successfully wins her trademark name and I hope she doesn’t go broke doing so. I was born in 1956 and have grown up with an unusual name. I’ve been teased a lot but NO ONE has ever mistaken Willa for “Wella” even at the height of Wella’s products popularity in the 70’s.

  2. Oscar Michelen

    Maybe they should call you as an expert witness!

  3. SDB

    Maybe we should all get together and boycott P&G products for a year or two. That would put an end to their tactics of bullying small businesses. Willa, Wella they don’t exactly sound the same. Simular maybe but certainly not spelled the same. There are hundreds of companies out there that have names that simular to other companies. So what is P&G problem? Sounds like P&G has a few anally retentive members on it board of directors.

  4. Charlie

    Maybe we all should just boycott Proctor & Gamble!

    1. Oscar Michelen

      It would take a massive consumer boycott to impact P & G

  5. Mary F

    I hope things work out in favor of the small entrepreneur. I have a 10 year old and I’m looking for something safe and am hoping to buy the product for my child. Good luck and prayers for success. I’m pulling for you.

  6. Oscar Michelen

    We will follow the case and report on it as it progresses, thanks for the post

  7. porsche

    ok it’s now January 2012. What happened? I couldn’t find anything anywhere.

    1. Oscar Michelen

      As often happens, the parties settled,with a confidentiality order in place and the case was closed in October of this year. Ms. Prunier is still selling Willa Products, so while no one involved in the case can discuss it, I would chalk it up as a win for the little guy!

  8. E.L. Williams

    We have a very similar situation. We have been using the name I’ve Got Talent Too! for on going entertainment purposes. Along comes a law firm Finklestein and Somebody, they represent the parent company of Americas Got Talent. Sending a threat of C&D or what they will do. They don’t know but they will be in for a hell of as fight! America needs to put their foot up Corporate Americas – – – !

    1. Oscar Michelen

      I have to tell you that I think the claim you are dealing with is really abusive. There can be no likelihood of confusion between the two trademarks and the names are not identical. Good luck to you and keep us posted. I doubt they will sue however and are likely just looking to push you around and see what you will do. Hang in there!

  9. Trademark Lawyer

    I am happy to see a small business standing up against these larger over powering corporations. In today’s court rooms it seems that the power of seemingly unlimited money wins. That shouldn’t be the case. It is important that anyone who holds a trademark or patent can effectively defend it.

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