Will Wella Whoop Willa? A TM Battle Between Skin Care Makers

Two colleagues sent me messages while I was out of the office last week about the September 28, 2011 New York Times.com article discussing the WILLA v WELLA trademark dispute.  Even though it’s kinda old news by now, I still think the article and the lawsuit are worth writing about, especially since I have been toying with the idea of adding a Brand Geek Bully Basement to this website to provide a single forum where victims of trademark bullying can share their stories, correspondence, pleadings, etc.  Please let me know what you think about that!

Ok, so now what about WILLA and WELLA?

Well . . .

WELLA was first used as a trademark for hair dyes, creams, preparations and conditioners on December 02, 1931 and was registered for such goods on June 2, 1953.  The WELLA logo depicted above also was first used on the same products on December 2, 1931 and that mark too became registered on June 2, 1953.  The WELLA logo mark became registered for shampoo on February 19, 1974, for clothing on January 23, 1996 and a for a range of additional hair care products on April 30, 1991.  Additionally, the WELLA PROFESSIONALS logo mark became registered for multitude of additional hair and beauty related goods and services on February 5, 2008.

Circa 2011, enter Willagirl offering WILLA branded hair and skin care products targeted to tweens via Target stores, J. Crew and actress Phoebe Cates’ boutique, Blue Tree.  According to the New York Times article, WILLA products were born of a mom’s desire to honor her daughter’s wishes for big girl soaps.  As if the personal care product market wasn’t saturated enough, this mom created her own tween-targeted products named after her daughter, Willa.  Wella Corp., a subsidiary of Procter & Gamble learned of the WILLA products and sent WillaGirl a C&D letter, which prompted Willagirl to sue Wella Corp. for declaratory judgment of non-infringement of its WELLA marks.  That’s right, Willagirl sued Wella, not the other way around.

According to the docket report, Willagirl filed its complaint on Feb 15, 2011.  Wella filed an Answer and Counterclaims (for infringement, of course) on April 1, 2011, and Willagirl filed its Answer to the Countertclaims on August 29, 2011.  On September 2, 2011, both parties filed motions for summary judgment (notices found here and here) under seal, just as the response briefs and replies all were filed, so we cannot see the parties’ arguments about the case.  Presumably, the summary judgment hearing is the “court date” to which the New York Times article refers as happening next month.

What I find peculiar is that the NYT article characterizes this as a case of trademark bullying, something I just don’t see.  I have been a vocal critic of trademark bullying.  So much so, that I wrote about it here, here, here, here, here, here, and here.  However, this does not seem to be a case of bullying to me.  This seems to be a case of repeated poor judgment.

First, the mark selection seems poor – it’s nice to want to name your product line after your daughter, but that doesn’t mean you can.  If my kid were named Nikey, do you really think I could name my clothing store that too?  Then, there’s the decision to sue rather than negotiate after receiving the C&D from Wella Corp., which is owned by P&G.  Who on earth sues P&G (or one of its subsidiaries)?  I mean, really.  When analyzing the risks associated with litigation, the opponent’s resources must be considered.  What did Willagirl expect Wella to do besides fight like hell to protect its eighty year old mark?  According to the NYT article, Willagirl estimates that it has its spent $750,000.00 in legal fees to date on the two New York City law firms representing it.  Sounds like another poor decision to me.  Apparently, the WILLA product line is in the natural products sector.  I am certain that my friends at Pure Branding could have helped Willagirl re-brand and re-launch for far less than what it’s spent on its lawyers, and with a far more certain outcome.

Don’t let lawyers call the shots.  Seriously.  Use your attorney to help you understand and assess risk, but don’t ask or expect them to make business decisions, lest you find yourself in situations that seem to benefit your counsel more than you.