Will Wella Whoop Willa? A TM Battle Between Skin Care Makers

Posted by | October 05, 2011 | Disputes, General | 7 Comments

Two colleagues sent me messages while I was out of the office last week about the September 28, 2011 New York Times.com article discussing the WILLA v WELLA trademark dispute.  Even though it’s kinda old news by now, I still think the article and the lawsuit are worth writing about, especially since I have been toying with the idea of adding a Brand Geek Bully Basement to this website to provide a single forum where victims of trademark bullying can share their stories, correspondence, pleadings, etc.  Please let me know what you think about that!

Ok, so now what about WILLA and WELLA?

Well . . .

WELLA was first used as a trademark for hair dyes, creams, preparations and conditioners on December 02, 1931 and was registered for such goods on June 2, 1953.  The WELLA logo depicted above also was first used on the same products on December 2, 1931 and that mark too became registered on June 2, 1953.  The WELLA logo mark became registered for shampoo on February 19, 1974, for clothing on January 23, 1996 and a for a range of additional hair care products on April 30, 1991.  Additionally, the WELLA PROFESSIONALS logo mark became registered for multitude of additional hair and beauty related goods and services on February 5, 2008.

Circa 2011, enter Willagirl offering WILLA branded hair and skin care products targeted to tweens via Target stores, J. Crew and actress Phoebe Cates’ boutique, Blue Tree.  According to the New York Times article, WILLA products were born of a mom’s desire to honor her daughter’s wishes for big girl soaps.  As if the personal care product market wasn’t saturated enough, this mom created her own tween-targeted products named after her daughter, Willa.  Wella Corp., a subsidiary of Procter & Gamble learned of the WILLA products and sent WillaGirl a C&D letter, which prompted Willagirl to sue Wella Corp. for declaratory judgment of non-infringement of its WELLA marks.  That’s right, Willagirl sued Wella, not the other way around.

According to the docket report, Willagirl filed its complaint on Feb 15, 2011.  Wella filed an Answer and Counterclaims (for infringement, of course) on April 1, 2011, and Willagirl filed its Answer to the Countertclaims on August 29, 2011.  On September 2, 2011, both parties filed motions for summary judgment (notices found here and here) under seal, just as the response briefs and replies all were filed, so we cannot see the parties’ arguments about the case.  Presumably, the summary judgment hearing is the “court date” to which the New York Times article refers as happening next month.

What I find peculiar is that the NYT article characterizes this as a case of trademark bullying, something I just don’t see.  I have been a vocal critic of trademark bullying.  So much so, that I wrote about it here, here, here, here, here, here, and here.  However, this does not seem to be a case of bullying to me.  This seems to be a case of repeated poor judgment.

First, the mark selection seems poor – it’s nice to want to name your product line after your daughter, but that doesn’t mean you can.  If my kid were named Nikey, do you really think I could name my clothing store that too?  Then, there’s the decision to sue rather than negotiate after receiving the C&D from Wella Corp., which is owned by P&G.  Who on earth sues P&G (or one of its subsidiaries)?  I mean, really.  When analyzing the risks associated with litigation, the opponent’s resources must be considered.  What did Willagirl expect Wella to do besides fight like hell to protect its eighty year old mark?  According to the NYT article, Willagirl estimates that it has its spent $750,000.00 in legal fees to date on the two New York City law firms representing it.  Sounds like another poor decision to me.  Apparently, the WILLA product line is in the natural products sector.  I am certain that my friends at Pure Branding could have helped Willagirl re-brand and re-launch for far less than what it’s spent on its lawyers, and with a far more certain outcome.

Don’t let lawyers call the shots.  Seriously.  Use your attorney to help you understand and assess risk, but don’t ask or expect them to make business decisions, lest you find yourself in situations that seem to benefit your counsel more than you.









About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.


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