|1980's Hair Band Twisted Sister in Concert / Wikimedia Commons|
Sandi Russell, along with her sister, Nancy Hansen, are two sisters operating a small coffee shop in Mission, Kansas. Their coffee shop's name is "Twisted Sisters," and their domain name is www.TwistedSistersCoffeeShop.com.
Russell recently reported that she received a formal cease and desist letter telling them to change the name because it has been trademarked by the 1980's hair band Twisted Sister which owns and operates www.TwistedSister.com.
According to the letter, the Twisted Sister musical group coined the name “TWISTED SISTER” in 1973, and “the juxtaposition of those two words never appeared prior to the creation and adoption of the mark by the band.”
Continuously since then, the band has had extensive media publicity and exposure of its mark, having released at least 12 full albums and 4 DVDs since 1973 under the TWISTED SISTER mark, which have been distributed and sold throughout the United States and worldwide.
Consequently, according to its lawyers, the band’s trademark is well-established and legally deemed "famous."
It is true that Twisted Sister has a federally registered and incontestable federal trademark (1,098,366) issued in 1978, but that trademark only covers: "ENTERTAINMENT SERVICES RENDERED BY A VOCAL AND INSTRUMENTAL GROUP."
The letter notes that the band has been successful in requiring that the Twisted Sister Bakery in Chicago and Twisted Sister Pizza in Massachusetts change their names.
Not mentioned in the letter is that third parties have apparently received numerous approved trademarks for marks using "TWISTED SISTER" (and variants), such as for Twisted Sisters Wine (3,443,617), Twisted Sisters clothing boutique (3,216,315), Twisted Sisters Our Business Is Dyeing colored yarns (3,027,439) and Twisted Sista for hair care products (3,947,150). All of those are live trademarks that appear to have nothing to do with the band.
Therefore, to establish even a prima facie case of trademark infringement, the lawyers would need to plead that the coffee shop's continued use of the “Twisted Sisters” name in connection with a small coffee shop is likely to lead to consumer confusion as to endorsement, sponsorship or affiliation with the 1980's band.
This claim would likely be an uphill battle from an evidentiary standpoint, and would probably require an expensive survey expert. One suspects that instances of actual confusion among consumers would be difficult to locate.
However, assuming the trademark is indeed “famous” and worthy of legal protection under the Federal Trademark Dilution Act, the band need only prove that the use of the unauthorized name is likely to dilute, either through tarnishment or blurring, the distinctive nature and fame of the band’s mark. In this context, this claim may be easier to plead even in the absence of confusion, as there is no doubt that the Twisted Sisters Coffee Shop likely "calls to mind" the 80's band, potentially blurring its distinctive quality.
Faced with the band’s demand that it change its name, the coffee shop’s owners reportedly intend to do just that. As of today, the coffee shop's website is no longer operational.