Blind Law School Dean Explains Why We Need The WIPO Copyright Treaty For The Blind

Twisted Sisters Coffee Shop Decides To Fight Back Against Trademark Bully Band Twisted Sister

from the you-go-twisted-sisters dept

Mon, Jun 3rd 2013 4:04pm — Mike Masnick

We recently wrote about how the band Twisted Sister was acting as a trademark bully and threatening a small coffee shop in Kansas, called Twisted Sisters. As we noted, the coffee shop name had nothing to do with the band, but actually was named after (you guessed it) a pair of sisters who had been called that by their brother decades ago (long before the band existed). The coffee shop had indicated at the time that it was going to change its name, but it looks like it's now decided to fight back. jupiterkansas lets us know that a lawyer agreed to represent them pro bono and is trying to explain trademark law basics to the band's lawyer. In the meantime, the coffee shop's owner sent a friendly letter to the band, saying that the shop's name has nothing to do with the band and that she really can't think of a better name, so she'd like to keep it.

Russell’s letter begins: “Quite honestly when I first received your letter I truly had to go to the site you provided to learn of this band. Sorry. After Elvis, the Beatles and the Beach Boys my love of music leans to country.” She recounts the history of the shop and the name’s origin in a nickname hung on the sisters by their late brother. And she closes: “Right now I am at a loss as to what we could possibly call ourselves that could emulate why we are ’Twisted Sisters Coffee Shop’ with our logo of a tornado coming out of a ruby red coffee cup. We are open to Mr. French’s ideas for us.”

I still think she should have used the line "we're not gonna take it; no, we ain't gonna take it; we're not gonna take it, any more..." but perhaps her approach will lead to a more amicable outcome.

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Filed Under: coffee, trademark, twisted sister

36 Comments

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Avantare, 3 Jun 2013 @ 4:13pm

How about...
Someone needs to sue Twisted Sister for calling that noise they make music.
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AG Wright, 3 Jun 2013 @ 4:20pm

Re: How about...
Unfortunately music is in the ear of the beholder and the musician. There's lots of stuff that gets on the radio that I won't listen to but that's the reason that there are preset buttons on the radio.
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doomcup, 3 Jun 2013 @ 4:34pm

If they do end up having to change the name, Twister Sisters sounds pretty awesome to me.
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Zakida Paul (profile), 3 Jun 2013 @ 4:35pm

In fairness
I greatly doubt the actual band members care about such things or have anything to do with the action. This is their 'representatives' written all over it.
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Zakida Paul (profile), 3 Jun 2013 @ 4:36pm

Re:
Swisted Tisters
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Anonymous Coward, 3 Jun 2013 @ 4:38pm

Re:
Great suggestion. Also, 2 Internets to you for your name!
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Anonymous Coward, 3 Jun 2013 @ 4:44pm

Re: Re:
Swizzle Sitters
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Anonymous Coward, 3 Jun 2013 @ 5:01pm

Re: In fairness
Well the lawyers have got to bill for something.
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Denisha, 3 Jun 2013 @ 5:01pm

Entangled Kin?
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Avantare, 3 Jun 2013 @ 5:10pm

Re: Re: How about...
I agree with you 100%. I do pick my stations on the radio using presetting. My problem with this is the suit in general. Someone somewhere filing a lawsuit that is just wrong. Investigate first attorneys and quit going after the $$$. Those give attorneys a very bad name. This one is there if he\she doesn't listen to common sense.
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Web_Rat (profile), 3 Jun 2013 @ 5:13pm

RE: In Fairness
Wouldn't bet the farm on band members not aware of this lawsuit. Listened to Dee's House of Hair this past weekend and he made reference to the fact the band is protecting the band's name via lawsuits.
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Anonymous Coward, 3 Jun 2013 @ 6:40pm

Please tell me their response included the phrase "We're not gonna take it."
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horse with no name, 3 Jun 2013 @ 7:06pm

Re: RE: In Fairness
Yup, and Mike knows that in trademark, if you don't protect the mark, you can lose it. A cursory search for Twisted Sisters on Google Image search turns up the band and not the coffee shop, and least for the most part.

While the risk of confusion is low, it is possible. Allowing the coffee shop would basically be giving up on the trademark except in the very narrow context of the band, diluting the value of the name. After that it wouldn't be far to get Twisted Sisters naming and branding by third parties on everything from food to leather jackets and makeup sets. Where do you draw the line?

Can you explain why a trademark holder shouldn't protect their trademark? The "it's sweet little old ladies" thing doesn't add up to much in a legal sense.
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Anonymous Coward, 3 Jun 2013 @ 8:00pm

Fisted Sisters?
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PopeyeLePoteaux, 3 Jun 2013 @ 8:05pm

Re: Re: RE: In Fairness
"Yup, and Mike knows that in trademark, if you don't protect the mark, you can lose it."

Not true.

The rights to a trademark can be lost through abandonment, improper licensing or assignment, or genericity. A trademark is abandoned when its use is discontinued with an intent not to resume its use. Such intent can be inferred from the circumstances. Moreover, non-use for three consecutive years is prima facie evidence of abandonment. The basic idea is that trademark law only protects marks that are being used, and parties are not entitled to warehouse potentially useful marks. So, for example, a recent case held that the Los Angeles Dodgers had abandoned rights to the Brooklyn Dodgers trademarkMajor League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993)."

Now, I doubt just by naming a coffee shop after the band could cause "Twisted Sister" trademark becoming generic.

Trademark rights can also be lost through improper licensing or assignment. Where the use of a trademark is licensed (for example, to a franchisee) without adequate quality control or supervision by the trademark owner, that trademark will be canceled. Similarly, where the rights to a trademark are assigned to another party in gross, without the corresponding sale of any assets, the trademark will be canceled. The rationale for these rules is that, under these situations, the trademark no longer serves its purpose of identifying the goods of a particular provider. Dawn Donut Co., Inc. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959).

http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#6

Nope, I still don't see how they can lose their trademark by not defending it against a coffee shop named before the band existed in the first place.

Please try again.
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Rob, 3 Jun 2013 @ 8:09pm

The Prairie Village Post
In case anyone is wondering, Prairie Village is neither.
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Anonymous Coward, 3 Jun 2013 @ 8:53pm

Re: In fairness
Jay Jay French is their guitarist and manager and is the one behind these actions.

Dee Snider says he has no control over the name and has nothing to do with it.

http://www.twitlonger.com/show/jn06gu
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Anonymous Coward, 3 Jun 2013 @ 8:56pm

Re:
The food truck they went after in MN used it...

http://minnesota.cbslocal.com/2012/10/25/food-truck-to-twisted-sister-were-not-gonna-take-i t/
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Anonymous, 3 Jun 2013 @ 10:48pm

Well. This one's easy. The band is Twisted Sister. The coffee shop is Twisted SISTERS. It's a difference of plurality! No one is going to confuse ONE sister for TWO. ;) In fact if it were me I'd tell them that their copyright claim is fraudulent and ridiculously unnecessary, because they only have one sister and I have two (or more.) and that my coffee shop name is trademarked to me, and they can't sue me for something that is mine.
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Keroberos (profile), 3 Jun 2013 @ 10:51pm

Re: Re: RE: In Fairness
Can you explain why a trademark holder shouldn't protect their trademark?
Because they only have trademark rights to the phrase 'Twisted Sister' for 'ENTERTAINMENT SERVICES RENDERED BY A VOCAL AND INSTRUMENTAL GROUP' but not anywhere else that would not be 'likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods'. If you understood trademark law, you would know that having a trademark doesn't give you the right to stop all other uses of it in commerce.
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Anonymous, 3 Jun 2013 @ 11:00pm

Same person as above.

Further, I don't see how they have any right to claim both Twisted Sister AND Twisted Sisters. Are they saying their band is called both? They shouldn't have a claim to it and their band name. That's like me going and naming a band, and then claiming copyright/trademark on every synonym for that band name. It's just not good marketing. For one thing, it limits creative expression down to nothing. For another, your fans are going to know the difference. Someone who actually likes Twisted Sister is going to know what it is called enough to know that they don't use the "s."

*shaking head* All of this policing of this stuff is seriously getting out of hand these days.
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The Old Man in The sea, 3 Jun 2013 @ 11:52pm

Re: Re: Re: RE: In Fairness
Does this mean that for the 10 years that the band did not exist (1987-1997) mean that the three year rule would apply?
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Anonymous Coward, 4 Jun 2013 @ 12:28am

Well then...
Because of this, fuck Twisted Sister. I don't wanna rock now :/
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horse with no name, 4 Jun 2013 @ 2:46am

Re: Re: RE: In Fairness
I have a feeling you've changed your name because of me. This will only lead to me trolling you more out_of_the_blew_Nancy_Grace_for_crack.
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Anonymous Coward, 4 Jun 2013 @ 4:16am

good to hear this! they should never have received the 'threat' in the first place, they had the name before the band did and they are not trying to take anything away over the bands music. they should win!
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Anonymous Coward, 4 Jun 2013 @ 4:33am

Quite honestly when I first received your letter I truly had to go to the site you provided to learn of this band.

Is living under a rock a viable legal defense?
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horse with no name, 4 Jun 2013 @ 4:52am

Re: Re: Re: RE: In Fairness
A very bad attempt at trolling, you suck.
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Anonymous Coward, 4 Jun 2013 @ 5:39am

A shit act from a shit band.
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Anonymous Coward, 4 Jun 2013 @ 5:53am

A shit act from a shit band.
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Greggore, 4 Jun 2013 @ 7:03am

We're not gonna take it! No we ain't gonna take it!
Music and Coffee shop....two separate businesses. If we take the notion that a name of a business makes that name exclusive to a business under the protection of copyright and trademarks, then by 2040 no one will be allowed to talk.
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Chuck Norris' Enemy (deceased) (profile), 4 Jun 2013 @ 7:51am

Re:
Without use of the internet, name two of Twisted Sister's songs. Now mentally transport back to 25 years ago when the band was barely relevant...now imagine you live in Kansas. Not too hard to believe they never heard of the band.
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Richard (profile), 4 Jun 2013 @ 9:08am

Re: Re: Re: RE: In Fairness
and there are plenty of others out there using the phrase - eg - this magic trick...

http://www.penguinmagic.com/p/24
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Richard (profile), 4 Jun 2013 @ 9:11am

why not the other way around
Can someone tell me why the coffee shop can't sue the band - since they had the name first?
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Dave, 4 Jun 2013 @ 11:16am

Re: why not the other way around
Sounds similar to a Mr Nissan's computer business (that had been around for years, way back when Nissan cars was called Datsun) being sued by Nissan cars comparatively recently, trying to get the domain name off him. The big bully trying to screw the little man into the ground. He was first with the domain name when there were no other similar names at that time, so why should Nissan try and say they currently have rights to it?
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Tubal (profile), 5 Jun 2013 @ 9:37am

Re: Re: Re: RE: In Fairness
You say that it is not true that "if you don't protect the mark, you can lose it"

But you then state that "Where the use of a trademark is licensed (for example, to a franchisee) without adequate quality control or supervision by the trademark owner, that trademark will be canceled." This is a generally accurate statement. The trademark owner's likely concern is that the coffee shop's use of the mark, without any quality control imposed by the band, could be considered a "naked license" which would diminish the band's right to lawfully claim the trademark.

In many such instances the prior trademark user/owner may offer a license for continued use of the mark, albeit under some sort of regimen that ensures adequate quality control or supervision by the trademark owner. The prior trademark owner may in some cases help the smaller user transition to a new brand. Often times these things work out just fine with little headache for everyone involved.

In short, the law does compel trademark owners to police use. Doing so does not make them into a "trademark bully." Although some do act in overly heavy handed fashion, I don't see evidence of that here. SEE letter:
http://pvpost.com/wp-content/uploads/2013/05/letter-sisters.pdf
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Michael, 5 Jun 2013 @ 10:37am

I didn't see this
I know Dee.

I'll see if I can get him to post a comment, but he's not one to talk about legal issues.

It is a shame. He has fought really hard for the first amendment (including congressional testimony), so seeing this is a bit disheartening.
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