Props to Everybody wants a rock for catching this first.
Deb Stoller’s four US trademark applications for STITCH ‘N BITCH (the four were for different classes of goods and services: knitting kits, television shows, bags and cases, series of books) were refused by the examiner. At this point, she has time to either file another response arguing against the rejection, or she can appeal the decision (this is within the US Patent and Trademark Office, not to a court). Or she could try again with a fresh application, perhaps for a design mark (using the fancy SnB font) rather than a word mark.
All four applications were refused on the same basis: confusion with a previously registered mark, that is to say, our favourite STITCH & BITCH CAFE. (When I first typed that, I inadvertently hit the dollar sign instead of the ampersand. How telling.) Deb’s arguments (via her attorney) that the channels of trade and the goods and services of the SFSE mark and her own were not persuasive to the examiner. The fact that the word CAFE appears in the senior (i.e., earlier registered) mark was not determined by the examiner to be sufficient to distinguish Stoller’s mark, because, as the examiner concluded, the CAFE is “highly suggestive, if not merely descriptive, of a virtual cafe or coffeehouse when used in connection with the registrant‚Äôs online chat room services.” In other words, he didn’t consider the CAFE to be a strong part of the SFSE mark.
Stoller had also tried to highlight the popularity of her mark. That wasn’t convincing to the examiner either, who pointed out that this could result in “reverse confusion,” in which consumers believe that the user of the junior mark is the source of the goods associated with the senior mark. (Reverse confusion is a doctrine used in the US; the concept has been introduced in Canada, but not applied in an infringement case.)
Console yourself with this fact, though: even if Stoller ultimately manages to get a trademark registration for STITCH ‘N BITCH, it’s no guarantee that SFSE wouldn’t still try to allege infringement of their CAFE mark. And there’s no reason for SFSE not to start working on Deb Stoller and Workman now, except for the fact that it will probably cost them more in lawyer’s fees than chasing after stitch and bitch groups on CafePress.
And in related news about that “virtual cafe or chathouse”, scroll down to July 7 to see the debate raging over whether it was okay to photocopy old sewing machine manuals without permission from the copyright owner. The verdict of the guestbook old-timers: “Now I know I’ve heard everything! Of course the manufacturer wants us to be able to use the machines that we’ve purchased. Get over it!” coupled with an unrelated anecdote about how somebody else granted permission for reproduction of something that wasn’t a sewing machine manual.