Stitch 'n Bitch… the continuing story

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.

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2 Responses to Stitch 'n Bitch… the continuing story

  1. j. says:

    The answer: maybe, maybe not. It depends on whether a court thinks that there is sufficient confusion between the trademark and the allegedly infringing mark. That confusion is assessed based on a number of factors, including a comparison of the marks as a whole, perhaps whether there is a portion of the trademark that makes it particularly distinctive, the channels of trade where the marks are being used, the relevant goods and services, and actual evidence of confusion (for example, people contacting SFSE for help with the SnB patterns, and in the context of “reverse confusion,” vice versa; surveys could also be conducted to determine whether customers or potential customers would be confused).

    Pointing out how widespread the phrase “stitch and bitch” is to the trademark examiner–or the fact that it did not originate with SFSE–isn’t necessarily a winning argument. While it might* help in countering an allegation of infringement, that doesn’t help Stoller’s position on why she should be entitled to a trademark registration.

    (*and that’s a big “might,” by the way–SFSE would then say that the modern widespread usage originated because of the SnB infringing usage.)

  2. jenny says:

    What I don’t understand is this: If the tm’d phrase in question were “Craft Corner Cafeteria” would the holder of the mark be able to prevent usage of “Craft Corner”? It was my understanding that trademark explicitly didn’t work this way. Which makes me feel the examiner is ignorant of how commonly used “SnB” has been for decades…although its greater popularity has been resurged by Stoller. Also, why would there be considered potential confusion with SFSE’s product when they’ve never offered (until recently) product associated with this phrase?

    Your insight is so appreciated and great to read. This is very disheartening.