Michael Sorrentino, a former Jersey Shore cast member, recently lost his trademark infringement suit against retailer Abercrombie & Fitch (A&F).
Sorrentino was part of the cast of the (in)famous MTV reality television show from its December 2009 start. He gave himself the nickname ‘The Situation’ or ‘Sitch.’ The show quickly became popular and, on February 2010, A&F started selling on its web site t-shirts with “The Fitchuation” printed in front, a word play on ‘The Situation.’
However, A&F’s interest in Sorrentino and the Jersey Shore show turned quickly into disdain. When casts members, including Sorrentino, wore A&F clothing on the show, A&F released a statement in August 2011 stating that “[it was] deeply concerned that Mr. Sorrentino’s association with [its]brand could cause significant damage to [its] image.” A&F even offered up to $10,000 to Sorrentino and other members of the cast NOT to wear A&F apparel. (See August,16 2011 press release here)
Sorrentino owns with his brother Marc the MPS Entertainment Limited Liability Company, which holds several ‘The Situation’ registered trademarks. The trademark applications were filed late 2010, and the company sells apparel on its web site, some of them bearing ‘The Situation’ trademark.
Sorrentino and MPS (Plaintiffs) filed a trademark infringement suit in 2012 against A&F (Defendant), claiming that A&F infringed on their trademark ‘The Situation’ by selling and advertising its ‘Fitchuation’ t-shirts. On June 28, 2013, the Southern District of Florida granted summary judgment to Defendant, finding no trademark infringement.
No Likelihood of Consumer Confusion
The Southern District Court of Florida belongs to the 11th Circuit, and thus used the Alliance Metals v. Hinely Indus. Inc. multifactor test for likelihood of consumer confusion. These seven factors are:
– Strength of the mark
– Similarity of the mark
– Comparison of the goods and services
– Similarity of the parties retail outlets and customers
– Similarity of Advertising media
– Defendants’ intent
– Actual confusion in the consuming public
Strength of the mark: Trademarks are traditionally classified by courts and commentators as (1) generic, (2) descriptive, (3) suggestive or (4) arbitrary or fanciful (see Zatarain’s Inc. v. Oak Grove Smokehouse, Inc). Arbitrary or fanciful terms “bear no relationship to the products or services to which they are applied” (Zatarain) and do not have to prove that they have acquired secondary meaning for the public, that is, that the public recognizes a particular term as designating a particular product. Think as an example ‘Apple’ designating a cell phone, not a fruit.
The Southern District Court of Florida found that ‘The Situation’ is an arbitrary and fanciful mark, as it bears no relationship to the product or service.
Similarity of the mark: Defendant had argued that ‘The Fitchuation’ t-shirt was a parody. The court did not elaborate on this argument, but nevertheless weighed in favor of Defendant on that factor. It noted that Defendant had used its own ‘Fitch’ trademark and that had reduced the likelihood of consumer confusion. The court also noted that “The Fitchuation” is “visually and phonetically different that “The Situation.””
Comparison of the goods and services: This factor weighed in favor the Defendant as there was no evidence that the public had confused its products with those of Plaintiff which, indeed, had not even started selling its own t-shirt line at the time A&F sold its ‘Fitchuation’ t-shirt.
Similarity of the parties retail outlets and customers: A&F sold its t-shirt exclusively though its stores and web site. There was no similarity of sales channels here, and there was no similarity of advertising media either.
As for Defendants’ intent, A&F did not have the intent to misappropriate the plaintiff’s goodwill. The t-shirt was a parody, and was not sold it to profit from Plaintiffs’ business reputation. The court cited the 1987 10th Circuit case Jordache Enterprises, Inc. v. Hogg Wyld, Ltd. where the court had found no likelihood of confusion between Jordache blue jeans and Lardasche blue jeans for plus size women, sold complete with a smiling pig and the word ‘Lardashe’ on the back of the pants.
Finally, there was no Actual confusion in the consuming public Plaintiff did not present any evidence to the contrary, and the court rejected a survey presented by Plaintiff as evidence as defective.
For all these reasons, the Southern District of Florida granted summary judgment to A&F on the trademark infringement claim.
Barring ‘Undesirable’ Customers from Wearing one’s Goods (Not a Good Idea!)
From the August 16, 2011 A&F press release about Jersey Shore cast members wearing A&F clothing:
“We are deeply concerned that Mr. Sorrentino’s association with our brand could cause significant damage to our image. We understand that the show is for entertainment purposes, but believe this association is contrary to the aspirational nature of our brand, and may be distressing to many of our fans.”
A&F is using the term “brand,” not “trademark.”A brand refers to the whole package, going to the store, emulating the models featured in the catalog and adhering to company’s ‘values.’ A&F has “fans,” not customers, and the brand is “aspirational,” meaning that the customers buy the goods to emulate a certain lifestyle, most of the time a lifestyle above their current socio-economical mean. A customer may buy and wear, say, a branded tee-shirt, because he aspires to be part of the happy-few set wearing that particular brand. But what if some customers deemed ‘undeserving’ by a brand do start wearing its products?
You Are Not Worthy!
In 2005, Burberry was desperate to prevent ‘Chavs’ from wearing its famous check. At the time, they particularly favored a certain Burberry baseball cap. ‘Chavs’ gained the reputation to party (very) hard, and the Burberrys baseball cap became a symbol of infamy. Some night clubs even started banning them and Burberry eventually decided to stop producing them.
A&F is notorious for seeking to prevent some people from wearing A&F goods. After an A&F manager reportedly peeped that poor people should not wear A&F clothing, Greg Karber, a LA-based writer launched a campaign on You Tube urging people to donate A&F clothing to homeless people.
In essence, what Mr. Karber was trying to achieve is a non-commercial dilution of the brand. The Lanham Act prevents dilution of the distinctive quality of a famous mark, but the use has to be commercial. It defines dilution by tarnishment as an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” Let’s hope that there will never, ever, be a bill proposing that wearing a brand while not being ‘worthy’ of it could be deemed tarnishment as well.
Image is Snooki & The Situation: The Egg Version courtesy of Flickr user chicagogeek pursuant to a CC BY 2.0 license.
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