Use of TV Show Title on Merchandise Could Confuse

Use of TV Show Title on Merchandise Could Confuse

by Thomas Long, Legal Editor, CCH Trademark Law Guide

The owner of a Michigan-based retail business specializing in products for home cooks sold under the registered mark “Bitchen Kitchen” was entitled to a preliminary injunction barring the Canada-based producers of a television show called “Bitchin’ Kitchen” from selling kitchenware and other merchandise under the mark, the federal district court in Kalamazoo, Michigan has decided. The producers were barred from using the mark in any context other than the title of its TV series.

The business owner’s request for an injunction barring the media company (“Scripps”) that operated the “Cooking Channel” cable TV network, which broadcast the program in the United States, from continuing to use the “Bitchin’ Kitchen” title was denied. Even though the owner had a strong chance of successfully proving at trial that confusion was likely to result from merchandise sales under the name, preliminarily enjoining use of the “Bitchin’ Kitchen” title for the TV show itself could violate Scripps’s free-speech rights, the court said.

Likelihood of Confusion

The likelihood of confusion factors weighed, on balance, in favor of the business owner, the court determined. The Michigan business and the Canadian TV producers sold very similar goods –aprons, cutlery, cookbooks, cooking magazines, and other kitchen-related goods. In addition, the marks were almost identical, textually. The marks sounded the same and would be understood as having the same meaning.

The parties used similar marketing channels, including TV commercials and Internet websites. A reasonable consumer could erroneously believe that the goods sold under both marks originated from the same source, the court said

There was evidence that the TV producers chose the “Bitchin’ Kitchen” mark in order to capitalize unlawfully on the goodwill and brand recognition built by the complaining business owner for the nearly identical “Bitchen Kitchen” mark. The producers had alleged in Canadian and American trademark applications that they had first used their mark on June 1, 2001 –the exact date of first use claimed by the complaining business in its U.S. trademark application –but the producers stated in media releases that the original Canadian version of the TV series did not begin until 2007.

The producers had used the “Bitchen Kitchen” spelling in a sponsored search-engine link, which also supported an inference of bad faith, according to the court.

It was undisputed that the producers continued to use, and aggressively expanded use of, their very similar mark after being informed that the senior mark existed, when the complaining business owner sent them a cease-and-desist letter. The producers also continued to use the mark after learning that the business had acquired a federal trademark registration for “Bitchen Kitchen.”

The court noted that the Patent and Trademark Office had found that a likelihood of confusion between the registered mark and the show title existed when the PTO filed an initial refusal of a pending application to register the challenged “Bitchin’ Kitchen” name. Although this finding did not bind the court, it deserved some weight in the likelihood of confusion analysis, particularly considering that the rest of the evidence did not support a contrary finding.

First Amendment

Scripps made a colorable argument that enjoining it from using the title would impermissibly impair its First Amendment freedom of speech, the court said. The title had artistic relevance to the underlying work –specifically, to the content, tone, style, purpose, and intended appeal of the show’s combination of comedic, informational, and titillating material and moods.

It was not clear that the complaining business owner would be able to establish that the “Bitchin’ Kitchen” title explicitly misled the viewing public as to the source or content of the program. The show was characterized in large part not by cooking, per se, but by the purported sex appeal and personality of the show’s hostess, “Nadia G.” A reasonable fact finder could determine that the Nadia G. character and the set of the program were highly different from the business’s retail store.

The Nadia G. character did not promote kitchenware on the show, the court noted. Scripps’s promotional websites did not carry products linked to the program or its title and the associated mark. In addition, the network asserted that it would sustain great financial harm if it was ordered to stop airing the “Bitchin’ Kitchen” program.

Martha Elizabeth, Inc., WD Mich., ¶61,806.