Bogus Trademark Threat From Twisted Sister Forcing Coffee Shop To Change Its Name

from the that's-not-how-trademark-works dept

Fri, May 10th 2013 12:22pm — Mike Masnick

jupiterkansas writes in to let us know that the band Twisted Sister has had its lawyers threaten and bully a Kansas coffee shop into changing its name from "Twisted Sisters." For what it's worth, the coffee shop owner says the name has absolutely nothing to do with the band:

The origin of the two names – Twisted Sister and Twisted Sisters – are vastly different as you might guess. Russell says the name for her store is a reference to a family label given to the sisters by their late brother back in the 1960s. He also used to call Nancy the “blond tornado” so Twisted Sisters and the logo, which looks like a tornado sketch are rooted in family and our Kansas location. Twisted Sister the band, we assume, has a different origin.

In looking at the actual letter sent, it appears that the lawyer for the band is specifically objecting to the web URL the coffee shop has set up (it's odd that the reporter leaves out this point). Still, in looking over the details, it seems pretty clear that the band and its lawyer are abusing trademark law here. It is true that Twisted Sister has a trademark (1098366) issued in 1978, but that trademark only covers: "ENTERTAINMENT SERVICES RENDERED BY A VOCAL AND INSTRUMENTAL GROUP." As the band's lawyer must know, trademarks are issued in particular categories, and having a mark in a single category does not mean you have control over those words.

While the letter also points out that they have successfully convinced other businesses to change their name, that still doesn't make the claim valid. The likelihood of confusion here is nil. No one is going to this coffee shop thinking it's run by the band or has any association with the band. Furthermore, the lawyer's suggestion that this would qualify as "dilution" also seems ridiculous. We're no fans of the dilution theory of trademark law (which seems to go against the very basis of trademark law), to be sure, but even if you accept it as valid, it is difficult to see how there's a valid dilution claim here. Yes, the band's mark is famous, but how the hell would they show that a random coffee shop in Kansas "dilutes" their brand in any meaningful way?

Furthermore, even if the band has bullied other stores into changing their names, it does not mean they're the only "Twisted Sister" out there. In fact, they're not even the only Twisted Sister with trademarks. In looking through filings, I found legitimate approved trademarks for... Twisted Sister the board game (85857824), Twisted Sisters boutique clothing offering (3216315) and Twisted Sisters Our Business Is Dyeing offering colored yarns (3027439). All of those are live trademarks that appear to have nothing to do with the band.

It seems like if the owner of the coffee shop, Sandi Russell, wanted to turn around and scream back at the band "we're not gonna take it; no, we ain't gonna take it; we're not gonna take it, any more..." she might be able to find a lawyer more than willing to make that argument. Unfortunately, from the sound of the article, it appears that Russell is caving in to the bullying and looking to change the shop's name.

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Filed Under: coffee shop, dilution, likelihood of confusion, trademark, trademark bullies, twisted sister, twisted sisters

25 Comments

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Matthew H (profile), 10 May 2013 @ 12:21pm

I would change it to "Twister Sisters".
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Anonymous Coward, 10 May 2013 @ 12:26pm

you never know, maybe the bad publicity from what the band is doing may be enough to make it less popular (is it very popular anyway?) with the public, who will avoid any concerts etc they are involved with.
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Anonymous Coward, 10 May 2013 @ 12:32pm

But that would infringe the trademark of the game "Twister."
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Anonymous Coward, 10 May 2013 @ 12:34pm

Re:
I would call it "Twisted Sister" just to fuck with them. Gee Toto.
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gorehound (profile), 10 May 2013 @ 12:37pm

Another loser MAFIAA Band of older Adults.I am so glad I am 57 years old, still love to play music, and believe in the Sharing is Caring.I seed a bunch of my stuff on TPB.I also give out my Art at www.bigmeathammer.com

Older Dinosaur Rockers ! Will not Adapt to Modern Times.
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dennis deems (profile), 10 May 2013 @ 12:45pm

Shame
It's a real shame people like Russell can't afford the legal expense to stand up to this kind of bullying. And it amuses me that the bully lists all those other victims as if they were a badge of legitimacy: "these companies recognized the rights of Mr. French". No, you creep; they recognized that standing up for their rights would take them directly to bankruptcy.
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Franklin G Ryzzo (profile), 10 May 2013 @ 12:47pm

I'd recommend tweeting this story to Dee Snyder. He's been a champion of free speech in the past and may not be aware of the lawyers actions (at least I'd like to think that). Hopefully if he isn't aware of this and it is brought to his attention, he'll have the action dropped.
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Anonymous Coward, 10 May 2013 @ 12:51pm

Who don't they...
Rename to sister twister, with the logo of a tornado twisting 4 blokes.
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That Anonymous Coward (profile), 10 May 2013 @ 1:10pm

IP is our greatest asset!!!

I think the portion most people seem to have missed is it now is just an asset to overreaching lawyers getting pay days.
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Anonymous Coward, 10 May 2013 @ 1:29pm

Welcome to fantasy magical land, where the dogs are made of chocolate and it rains lollipops, and government-rubberstamped pieces of paper are taken as proxies for innovation, ate used to skew the free market in anti-consumer fashion, can run businesses into the ground, and can force a 30 year old commerce to change its name!
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Stuart Gray, 10 May 2013 @ 2:00pm

It is businesses like theirs that fold when they know they are correct that encourages this type of behavior.
Screw Twisted Sister and Twisted Sisters.
They can both go pound sand.

If you do not stand up for what is right ... You are wrong.
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Davey, 10 May 2013 @ 2:07pm

Re: Shame
The law needs to be changed to award damages to defendants if the judge/jury finds that the suit is about bullying or intimidation through the threat of a lawsuit that the defendant can't afford. Then the lawyers would come running, and the extortionist plaintiffs would have a whole nother set of risk/reward consequences to contemplate.

If i were on such a jury, about a $million to the defendants sounds about right.
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Davey, 10 May 2013 @ 2:24pm

Re:
Wonderful Blame the victim for not sacrificing their business to stand up against rich extortionists. It is not the victims who encourage this type of behavior -- it is "IP" laws written by and for asshole bullyboys like Twisted Sister.
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Anonymous Coward, 10 May 2013 @ 2:25pm

Re:
It is businesses like theirs that fold when they know they are correct that encourages this type of behavior.

You have never been sued.
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Justin Blaufuss, 10 May 2013 @ 2:56pm

Next Target?
http://twistedsisterscupcakes.com/
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Jef, 10 May 2013 @ 3:09pm

Humph...
Perhaps it's time to get Ken @ Popehat involved in this one. It just ain't right that Twisted Knickers...errr...Sister would be able to get away with this.
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anonymous dutch coward, 10 May 2013 @ 3:54pm

say it ain't so
this is Dee's twitter account: https://twitter.com/deesnider. Ask him the question.
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quawonk, 10 May 2013 @ 4:36pm

They're probably just jealous that the coffee shop has made more money and has had more relevance than they have in 20 years.
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Anonymous, 10 May 2013 @ 5:27pm

Twisted Sister is still around? Seriously? Outside of having, like, 2 hits in the 80s, what have they done?
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Anonymous Coward, 10 May 2013 @ 6:25pm

One would think that the coffee shop might say...

( �_�)
( �_�)>⌐■-■
(⌐■_■)

"We're not gonna take it!"
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Anonymous, 10 May 2013 @ 6:27pm

Re:
That's pretty much what the last paragraph said, isn't it?
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Anonymous Coward, 10 May 2013 @ 6:59pm

Re: Re:
My bad. I thought the article needed more sunglasses.
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The Real Michael, 11 May 2013 @ 4:55am

Now you know what happens when fame subsides...

As much as Twister Sister is to blame, this problem really stems from our busted legal system, designed to allow for this sort of abuse. Put simply, it discourages effort. After all, why work to make a living when you can hire an attorney and find innocent people to sue (i.e. steal from)?
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Anonymous Coward, 11 May 2013 @ 11:19am

"Yes, the band's mark is famous, but how the hell would they show that a random coffee shop in Kansas "dilutes" their brand in any meaningful way?"

I believe you were the one who coined the phrase (/s/, Streisand Effect.

They effectively diluted their brand by publicizing the similar named coffee shop and in so doing tied their name to it.
Just one more way to bully people to get what you want.
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Anonymous Coward, 11 May 2013 @ 9:09pm

Re:
YEEEAAHHHHHH!
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