… and New York answers

A response to Stoller’s motion to amend the petition to cancel has been filed.  Not surprisingly, SFSE objects to the proposed amendment.

Some levity, more backstory, a public appeal(?), then the substantive argument…

Let’s dispense with the levity first.

This response to the motion to amend characterizes the proposed amendments as “nothing more than the latest in a string of continued efforts by Petitioner [that's Stoller] to harass Respondent [that's SFSE]” and that “[s]imply put, the proposed amendment is not being made in good faith but as a tactical maneuver to literally drown Respondent in litigation costs.”

(I must interject, I’ve never used the phrase “literally drown” in such a context myself.  “Literally” drowning is much more severe than “figuratively” drowning.)

This response also notes that the cancellation proceeding was instituted “on the eve of Christmas”. 

Christmas, people.  Can’t we all just get along?

To be fair, the cancellation proceeding was instituted by Stoller on November 7, which puts it around the beginning of the shopping season.  However, the Trademark Trial and Appeal Board bears the responsibility of transmitting the petition to cancel to the trademark registrant, and the TTAB’s internal procedures meant that this notice was sent out on December 21, which is close enough to Christmas eve.  Stoller’s attorney sent a copy of the petition to cancel as a courtesy to SFSE’s attorney in November.  Thus, one might think that highlighting that December 21 date is a swipe at the Board responsible for hearing the cancellation proceeding.

The submission also reveals a few more incidents in the Stoller-SFSE saga:

  • SFSE’s submission states that once SFSE became aware of Stoller’s trademark applications, in June 2005 SFSE’s attorney wrote to Stoller and “invited Stoller to discuss” her “attempts to use and register the STITCH ‘N BITCH mark”, but received no reply. This letter is provided as an exhibit to the submissions.  It was addressed to Stoller’s counsel and warned that SFSE had strong evidence of actual confusion between SFSE and Stoller’s business (likely this statement is referring to SFSE guestbook entries in which the writers had made reference to Stoller’s first SnB book).  The letter closed with an indication that SFSE might be amenable to discussing an amicable resolution, but in the meantime demanded that Stoller cease her use of STITCH ‘N BITCH.
  • Later attempts by SFSE’s “representatives” (the submission does not specify that it was the attorney who made these attempts) to discuss the matter also proved futile. 
  • Stoller’s counsel provided a response in November 2005, which is also provided as an exhibit.  This response included a copy of the petition to cancel the STITCH & BITCH CAFE mark, and characterizes SFSE’s belief that its trademark rights extended to STITCH ‘N BITCH for chat rooms as “misguided”.The letter also includes a demand that SFSE cease its use of STITCH & BITCH on sewing-related equipment (which use was proferred as a specimen for this) in view of Stoller’s superior (earlier) rights, and indicates that Stoller believes that SFSE’s “rush” to place the STITCH & BITCH mark on products “by superimposing the mark on photographs of goods shown on its website is in bad faith” [coughpicturecough].

The submission also includes content that, on my reading, appears to be an appeal to the (knitting) public at large.  I’m certain that SFSE is aware that each step of the TTAB cancellation proceeding is being reported (so far as those steps are easy to research, thanks to the USPTO website), so they have taken the opportunity to reach out:

On information and belief, Stoller and/or other individuals closely associated with Stoller then launched a campaign to portray SFSE in a negative light.  A handful of individuals started to regularly post a series of negative and inappropriate comments on SFSE’s web site, began to post negative reviews regarding books written by the principal of SFSE on Amazon.com, sent derogatory letters to SFSE, organized a boycott campaign against SFSE, and generally pursued a strategy of making it appear that SFSE was attempting to usurp rights in the name and mark STITCH & BITCH – all the while ignoring or concealing the fact that Stoller claimed to own the mark STITCH ‘N BITCH, had filed four trademark applications to secure the mark STITCH ‘N BITCH for herself and for her own benefit, had demanded that SFSE cease use of the mark STITCH ‘N BITCH and, in short, has been seeking to destroy SFSE’s senior rights in the STITCH AND BITCH CAFE mark [sic -- that should be an ampersand, actually] so that Stoller could secure her junior rights in the STITCH ‘N BITCH mark for her own benefit.

and in a footnote:

It should also be noted that some of the negative postings have suggested that SFSE’s enforcement actions regarding groups using the name STICH AND BITCH (such as STICH AND BITCH NYC) [sic] was for the purpose of preventing user groups from expressing their views on knitting on [sic] sewing.  Such has never been the case.  SFSE took actions to protect its rights and to have online groups change their names from STITCH AND BITCH to another name, not to prevent groups from having online venues.  SFSE continues to support and welcomes the free exchange of ideas in the fields of sewing and knitting, and has even invited groups that want to use the STITCH AND BITCH mark for their online user groups to do so on forums that could be created on or through SFSE’s web site for free

No evidence of the factual allegations in these excerpts is attached to this response, although perhaps this evidence has been the subject of the discovery process.  And I’m not certain that the TTAB cares whether individuals are free to talk about knitting or sewing online — that’s not the point of a cancellation proceeding.  These allegations, while they might colour the proceedings as a whole, don’t seem to be tied into the question to be decided on this motion: should the amendment to the original petition be allowed?

And speaking of that question, there is some substantive argument on this point:

The test for allowing an amendment, as enunciated by SFSE in its submissions, is whether granting leave to amend will not be unduly prejudicial to the non-moving party (i.e., SFSE). 

SFSE argues that Stoller was well aware of these additional grounds before the cancellation proceeding was commenced.  Apparently, because the Wayback Machine was used to provide documentation, and because so many people rallied to Stoller (or at least, against SFSE), she should have known everything at the outset:

Indeed, in postings and communications from individuals supporting Petitioner, it is clear that such archival web pages [from http://www.archive.org/] have been reviewed, commented on and communicated to Petitioner well before the instant Petition to Cancel was filed.

It’s nice to think that someone thinks the opinions of non-parties count.  The submissions also suggest that SFSE thinks that Stoller has had plenty of legal counsel helping her out (at least two different sets of attorneys?) and that new grounds, therefore, could not have “suddenly” been discovered.

However the Board might address the question of whether Stoller should have pleaded those grounds at the outset (was it necessary to have discovery in order to determine that those new grounds were available? consider, for example, the new allegations concerning sewing instruction and manuals, or the precise nature of a telecommunications service provided by SFSE, or the nature of the guestbook functionality as evidenced through the WayBack Machine), the submission seems to only suggest that there would be undue prejudice only because of the increased cost of the proceedings. 

As a final note, SFSE’s submission also hints at “expert discovery” and “significant third party discovery”.  But alas, no hints at free trips to New York for anybody.

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37 Responses to … and New York answers

  1. j. says:

    Because of an excess of spam, I’ve closed comments on this post. If you have a comment to leave please find another, more recent post in the stitch v bitch category and leave your comment there.

  2. Amie says:

    It’s not Greggie Poo, BurlyQ. Greggie sent me an “anonymous” email and also make a fake Stumbleupon name (“JesusPete”) and attempted to snark my stuff. Autumn, however, went to my blog and commented. She’s the same person as here – from Canada – and she said “Please you contributed to her crap? Don’t you think that your ideas are so much more. You should really do your own book. And by the way, give the people at SFSE a break. Love your stuff!” I don’t think Greggie would say that.

    While I appreciate the thumb’s up, and the advice of doing my own book (been on that for 2 years now), I don’t forsee myself giving SFSE a break. They deserve what’s coming to them.

  3. BurlyQ says:

    Now Autumn definitely = our friend GG. Or does Autumn = Johanna = Karen = Greg Garvin? Is Greg Garvin Elissa’s alter-identity?

    Hmmm… I wish I could say “the plot thickens,” but really it’s just pathetically predictable. Semi-entertaining though, I must admit.

  4. j. says:

    Dear Autumn,

    According to the end-user agreement for your bust.com e-mail address, you’re supposed to be at least 13 years of age.

    (There’s also the stuff about providing true information about your identity to the e-mail service provider, but I’m sure you read that.)

  5. Amie says:

    BurlyQ: Johanna = Elissa? Now wouldn’t that make for an interesting turn of events! If the IP fits, sure, unless they’re using an IP scrambler.

  6. Autumn says:

    I love that chocolate….I want to order one for my grandmother.

  7. Autumn says:

    Yeah so where did all of you chickens learn about trademarks. At the least the girl from auntie has some background here in canada. Most people are probably afraid that the bully bitch stoller will take their ideas. I guess a little credit is better than none. Just like she is trying every which way she is trying to steal SFSE’s.

    Have you read the latest USPTO posting? Uhh..! Yeah girls stoller must be looking around for something new. Could be you next. Some feminist – beats down a woman owned business that supported her. Wow!!!!! I am completely done…

  8. BurlyQ says:

    Why am I getting a sneaking suspicion that Johanna = Elissa…?

  9. Johanna says:

    And just in time for Mother’s day – http://www.sewfastseweasy.com/items/Stitch&Bitch and I love chocolate. Anyone want a bar?

  10. Bryn says:

    Oooooooh! Mmmmmmm…chocolate yarn. Command it to be made, oh Blog Queen! :D

    I hadn’t really thought too much about the Stollerzilla, but now you’ve implanted that image in my brain and it won’t come out. Bad, wicked, naughty, *evil* Blog Queen!

  11. Shannon says:

    How about chocolate yarn? That would work, too.

    (Bryn, when I first read the Stollerzilla sentence, I almost spit coffee on the keyboard. That’s a t-shirt design I’d love to see…)

  12. Bryn says:

    Oh, come now, Shannon! Any Blog Queen worth her salt would have asked for tribute in the form of chocolate!! Well, all right, chocolate and yarn.

    What I find the most humorous is the “Well, shucks. Here SFSE is…just this poor, little, put-upon tiny lil’ ol’ company facing the massive onslaught of….gasp! Debbie Stoller!! She’s huge!!! She’s like Godzilla with knitting needles!! Really!! I saw her stomp on Tokyo once!” This whole attempt at a David vs Goliath scenario gives me the giggles every time. That and the fact that they can’t seem to muzzle the twit that runs their website. I’d hate to be the attorney trying to rein that guy in!

  13. Shannon says:

    Oh AWESOME! It’s Johanna/Karen/whoever the heck she is — the one who called me a ‘blog queen’! See the knittersgettingbitchy site for the full and humorous commentary. Oh, wait. Let me paste it in here in case she goes all SFSE and deletes the evidence:

    “Who has not come out publicly about this issue is self proclaimed snb queen Debbie Stoller or SFSE owner, Elissa Meyrich. To add to the drama, knitters including blog queen Shannon Okey are trying effortlessly to move on the school to leave knitters alone. Instead of focusing on her book release in September and without knowing the whole story, she fighting fearlessly against this small business.”

    (As your Blog Queen, I expect to be receiving tribute any day now… balls of yarn, branded rulers, Scotch tape, what have you…in fact, I fighting fearlessly to obtain your tribute)

    By the way, in case you had your SarcasmFilter(TM) turned on, I was being sarcastic about the awesomeness of her commentary.

  14. jauncourt says:

    This is what that link was supposed to go to:
    http://www.freetostitchfreetobitch.org/bitch_and_bitch_cafe/viewtopic.php?t=134

    I do know that the merchandise in question, Gingher shears (mark and product line owned by Fiskars Corp.) and Clover notions (manufactured in Japan and sold in the US by Clover Needlecraft Inc, but the mark is registered to the Japanese parent corporation, Clover Mfg. Co.), are proprietary designs, and that it’s extremely unlikely they’d produce customized merchandise for a small concern like sfse.

    I do find it fishy that they’d remove the existing trademarks from the merchandise and rebrand it as theirs, without otherwise altering the merchandise. It just struck me as odd, sfse’s use of well-known, non-generic brands of tools, for their branded merchandise.

  15. j. says:

    *shrugs* It usually isn’t necessary to identify *who* made a product, although there are often regulations concerning the identification of *where* it was made, or its composition. Perhaps the line would be crossed by suggesting that the product was manufactured by someone other than the true manufacturer, but not by remaining silent on the subject.

    Veering slightly off topic: one could hypothesize scenarios where a reference to the ODM *should* be removed. For example, some artisan could be in the business of overdyeing yarns manufactured and distributed at retail by others. This artisan could purchase yarn at wholesale or retail with the original manufacturer’s/distributor’s tag on it, and do such a horrid dye job, destroy the original texture, etc. that to leave the original tag on the skein might do damage to the manufacturer’s reputation.

    (Link to the letters to the manufacturers doesn’t work, by the way.)

  16. jauncourt says:

    What’s your take on one company rebranding another company’s merchandise and selling it as their own?

    I realized this was going on because I knew the real sources of at least 3 of their “branded” (rebranded) products: Gingher shears, and Clover notions (seam ripper and tracing wheel). I recognized them as I OWN several of each company’s items (I’m a sewing and fiberarts geek), and thought it was awfully fishy that sfse seems to be marketing their stuff without mentioning who made it (unless they are using pictures of different items to sell their branded merch? Don’t want to go there…).

    I’ve sent letters to the two manufacturers I was able to identify, and they can be seen here

  17. j. says:

    Johanna hasn’t left one. But there was someone who set up a pro-SFSE blogger account ages ago. Can’t remember the address.

  18. deedee says:

    I was wondering if I could have the address or link of the anti knitter blog. I would like to read more of what she has to say.

  19. Urraca says:

    Even without the SFSE trolls (they’re a nice touch though), I find your account of this dispute really entertaining.

    BTW, did you see this picture on neoknits blog? Whoever manufactured that ruler could chime in any minute now.

    http://neoknits.blogspot.com/2006/02/day-6.html

  20. Jenn says:

    I think its funny that Johanna appears to have lied in *her* Amazon book review, unless she took classes from Elyssa after July 11, 2005. Here is what I think is her review:

    This book is an absolute must have for anyone, July 11, 2005
    I have been interested in sewing all of my life and so I finally went to BbN and stumbled upon this book. I absolutely loved it so much I bought one for each of my friends and one for my mom. We have all talked about taking classes in sewing but none of us ever followed up.

    I read that this lady has another coming out. I can not wait. The projects are easy, fabric is demistified and the sewing machine is explained explicitly. I love love love this book.

    The only complaint I have is that Joann’s did not know what needlepunch was and it was a supply needed for the tote. Pick it up if you can and share it with others. Great book!

    http://www.amazon.com/gp/cdp/member-reviews/A1QICRAT01BHUY/104-4278902-3746355?_encoding=UTF8

  21. BurlyQ says:

    I wondered when Johanna would surface again :) And she showed such restraint in that Karen post. Pity she cracked. I suppose we’ll be seeing new entries on her anti-knitter blog any day now.

  22. j. says:

    The IP addresses for Karen and Johanna are identical, and the Karen who posted the most recent comment has the same e-mail address (which y’all can’t see) as Johanna. 

    Darn, I take it this means the SBA isn’t actually interested in what I might have to say about continuation practice.

    (“Taking” my patterns = copyright infringement.  We’re talking about trademark infringement here.)

  23. lori says:

    just happened to have some Scotch TM tape right beside me here on the desk. ;) not sure if it’s officially genericized, but i do hear ‘scotch tape’ used informally on a regular basis by people who would like a piece of ‘clear adhesive tape’ (along the same lines as ‘bandaids’ and ‘kleenex’).

  24. Karen says:

    You seem to have all of the knowledge, like where Debbie got it. I don’t believe she got it from her grandmother unless she is really sadistic. I mean come on “not your grandmother’s knitting”. Why not run over old grandma with the beamer or in Debbie’s case throw her on the subway tracks. Wake up and smell the coffee!

    Brenda and Debbie felt like they were starting something new when they organized these groups and there is press in several places that support that argument. They have both stated everywhere you look in fact that this was a new concept that have not been done before. Brenda even stated that she could only find something called the Windy City Knitting Guild and while she was sure they were nice people it was not someone she really wanted to hang out with. So lets see, grandma’s are no good so lets take someone else’s cool phrase and run with it. It is the age of the internet, lets take and run with it.

    Then everyone gets all pissed at SFSE for monitoring it. You can not say oh if they would have just come to us or we not making money even though several groups had stores or several have their own websites. What is the point of trademarking if people can use it to make money also? What is the point of any of it? Why don’t I take the girl from auntie’s pattern and sell them? (i will not do this) Do you get it? You monitor it, people get pissed. You don’t, people take it. There is no end to this kind of stuff.

  25. j. says:

    I can’t speak to the example of Starbucks, except to wonder if by now their trademark now qualifies as a famous mark, which tends to enjoy greater protection than non-famous marks. Owners of famous trademarks (that’s a court definition, there’s no famous trademark register ) are often able to prevent dilution of their marks by others, even if the other usage (which might not be identical) is beyond the scope of their wares and services.

    In addition, if this had been pre-whenever-it-was-that-Starbucks-started-up and you said “Starbucks” to someone, they wouldn’t have understood that to mean “coffee shop” or something like that–there was no previous association of the phrase with retail coffee sales.

    On the other hand, we don’t appear to be dealing with a famous mark here, and the phrase “stitch and bitch”, as has been argued, is descriptive of a gathering where participants literally engage in stitching. For those reasons, I’m not certain that Starbucks is a good example to use here.

    “Scotch tape” is another close call. If the mark was ever registered by 3M (haven’t checked), I’m wondering if it has been genericized by now, meaning that it has become descriptive of the particular wares of adhesive tape (haven’t checked that either). Anyone know?

  26. Johanna says:

    I really am pissed that this thing is going this far. First, I am proSFSE because I am a former student. I remember Elissa saying nice things about Bust at some point and on a recent visit to the store I overheard something about this. Look, I firmly believe that the writer trys to tell the facts, some of you and myself are emotionally charged over the issue, but the fact remains that SFSE owns Stitch & Bitch Cafe as a trademark.

    Starbucks a “big company” shuts down anything opening with the term bucks in it. Does that mean that Starbucks owns the words buck or bucks or any variation? No. It means that they have to protect themselves/products from confusion. Scotch tape is still the rights of Scotch Brand. Why shouldn’t small businesses have the right to protect their names if they can afford it? I have a small business and work hard for my money. I am considering it too.

  27. j. says:

    Hello Karen,

    I suspect that a lot of readers here would take issue with your observation that Deb Stoller “obviously got the phrase” from SFSE, and/or wonder if you’ve got your signals mixed.

    You seem to be saying that most people who come to this website are siding with the “little guy”, i.e. SFSE–from the responses I’ve received, that’s not the case. It’s either Stoller or neither. The odd pro-SFSE comment that has been received here has been in the distinct minority.

    (While I was writing this, BurlyQ posted, so that was a bit repetitive.)

    Whatever side anyone’s on, it isn’t obvious that Stoller learned the “stitch and bitch” phrase from SFSE. There is documentation elsewhere that the phrase has been used for decades before SFSE’s claimed earliest usage, and it’s not for any of us here to pronounce definitively that the source of Stoller’s knowledge was SFSE or another, earlier source. I realize that there is a reference to SFSE’s business in Stoller’s Bust magazine that is being used by SFSE to argue that she was aware of the phrase through their usage, though. (Since I don’t own Stoller’s first knitting book anymore, I can’t actually say what Stoller cites as her source of the phrase.)

    While a hallmark of trademark infringement is confusion, another one is use. To date, there has been no clear determination that the activities of individual knitters who made use of third-party services such as Yahoo! Groups were infringing anybody’s rights by hosting “stitch and bitch”, etc.-titled groups for coordinating physical gatherings–or even if their use of the phrase was one that was confusing with somebody’s registered trademark, diluted it, or depreciated its goodwill without being confusing. SFSE, of its own volition or on the advice of counsel, acted to have those groups removed or renamed, by alleging trademark infringement either by the knitters themselves or by the third-party service for allowing others to participate in online forums bearing those names. (The default Yahoo infringement allegation message usually implies that it’s the user’s fault.) Members of those groups felt wronged because they were not engaged in any commercial activity that they felt translated into trademark infringement, dilution, or depreciation of goodwill. And this resulted in a community uprising against SFSE.

    Deb Stoller has reportedly asked individual groups who were selling tote bags, t-shirts, etc. bearing names too close to her STITCH ‘N BITCH (unregistered) mark to desist, so I expect that there are people out there who resent her alleged rights as well. However (and here, I’m putting words in other people’s mouths) I’m willing to bet that had SFSE not proceeded to have shut down/renamed/moved online stitch and bitch groups, most people would have treated this cancellation proceeding/trademark conflict between Stoller and SFSE as an amusing sideshow. But SFSE brought the online groups into the fray in what appears to be an attempt to flex its alleged rights as a senior user of a mark comprising the words “stitch” and “bitch” but also “cafe”, so the people who would have otherwise been spectators became active participants in boycotting SFSE, spreading the word about its treatment of online groups, and so on.

    So, while the original dispute was about to be about trademark confusion, because the original phrase was known and had a definition in a particular market before 1997, the dispute has expanded to include the public’s rights.  (If this had been a dispute about a coined word, I don’t think any of this would be happening right now.)  While that’s a descriptiveness argument, in a twisted sense it’s still about confusion, because SFSE has effectively announced that any usage of “stitch and bitch” or its variants is confusing with its registered CAFE mark.

    It’s interesting to see that the SBA is interested in how this cancellation proceeding is unfolding, whoever it is that got the SBA interested in the first place. And now that I know that someone from the SBA is reading this, I’m very tempted to start posting about how many small businesses and their patent attorneys oppose the proposed changes to US patent continuation practice because they believe it will have a serious adverse impact on their ability to adequately protect their inventions. Patent quality won’t be improved by restricting the number of filings.

  28. BurlyQ says:

    P.P.S. Debbie got the phrase from her grandmothers, not SFSE. The phrase belongs to the generations. SFSE may have trademarked it, but they didn’t invent it. But of course, everyone but Karen knows that already :)

  29. BurlyQ says:

    P.S. You’re correct about rooting for the little guy. But the “little guy” (aka victim) in this case is hundreds of non-profit knitting groups. Too bad there’s not a Small Hobby Group Administration to look out for us.

  30. BurlyQ says:

    Karen: I’m assuming GFA is making an effort to be somewhat neutral on the subject, at least as it pertains to what she writes here. But your assumption about people who come here rooting for SFSE? Um, guess again. It’s actually just the opposite.

    But hey… glad to hear the SBA is interested in the case. I think.

  31. Karen says:

    I personally would like to inject that protection of a trademark is to prevent confusion with other products. I have been following this from Washington, DC because some friends told some friends who told some friends. I realize that most people who come to this website will be for “protecting” the little guy, which in this case is SFSE from Debbie Stoller who obviously got the phrase from them.

    I had never heard this phrase before but there are many of us from SBA interested in monitoring this case.

  32. Enjay says:

    Is it just me, or is SFSE’s lawyer using rather unprofessional language and tactics? Also, in reading what he’s written, it sounds as though he’s saying that DS has hired more legal power than SFSE can afford. Wouldn’t that be saying her legal representation is better than theirs? Considering that it was SFSE’s counsel who wrote it, I find that highly ironic.

  33. Janice in GA says:

    Thanks for keeping us updated on this!

    {Grabs popcorn and pulls up comfy chair, anxiously awaiting next installment in the melodrama.}

  34. Yvonne says:

    “…other individuals closely associated with Stoller then launched a campaign to portray SFSE in a negative light…”

    This just seems completely myopic to me, as if the only positions people have taken are “stitch and bitch” belongs to SFSE, or “stitch and bitch” belongs to Debbie Stoller. From where I stand, it seems that most crafters believe that exclusive rights to “stitch and bitch” should not be granted to any single party, as it’s clearly a term that has been in use for a long time.

    While it’s true that Stoller has earned some idiosyncrasy credits with the knitting community while SFSE has not, I can’t imagine that people would quietly let her shut down the online SnBs either, for a number of reasons.

    In addition, Stoller’s statement on p.9 of Stitch ‘N Bitch that she organized the first SnB group in NYC, while probably an overstatement, could generously be interpreted as she started the first SnB group with the explicit goal of “taking back the knit” in NYC, which may very well be true. I don’t think that statement necessarily implies that she thinks she invented or is entitled to a monopoly on the term, though I suppose she could have made comments to that effect elsewhere. On the other hand, SFSE’s statement that “No other usage of Stitch & Bitch ever occurred before the first Friday evening gatherings at Sew Fast Sew Easy…” leaves little room for a generous interpretation.

  35. j. says:

    Damn, that was my typo. I’ve corrected it. Sorry!

  36. beth says:

    ha ha “grups” Doesn’t their legal department have a technical reviewer? Or a spell checker.