District Court Decides Which Party was the Wrongdoer in the Ballet Shoes Trademark Case

I.M. Wilson, is a Pennsylvania corporation which operates in King of Prussia in Pennsylvania and sells a variety of dance-related products, including ballet shoes and printed shoes. The founder of the corporation is Irene and the President is I.M. Wilson. OOO Grichko is a Russian company that manufactures and sells dancewear products, including ballet shoes and printed shoes. Grishko dance, S.R.O. is a Czech company that obtains and sells these products through the website grishkoshop.com. Nikolay Grishko holds an ownership interest in the Grishko group of companies, which collectively sell products in more than 70 countries. These parties collectively identify themselves as “Grishko”. Grishko produces several lines of pointe shoes, each bearing unique model namesor “model marks.”Grishkoalleges that it is exclusively responsible for selecting, adopting, and using the model marks. Grishko’s applications to register certain of the model marks with the U.S. Patent and Trademark Office (USPTO) were pending.

grishkoIn April 1990, I.M. Wilson and Mr. Grishko’s“kooperativ” formalized their relationship in an exclusive trademark licensing and distribution agreement (the 1990 Agreement). This agreement was followed by a nearly identical agreement that I.M. Wilson and Grishko entered into in March 1992. Through the 1992 Agreement, Grishko agreed to sell and LM Wilson agreed to buy the ballet shoes, toe shoes and other footwear. Grishko granted LM Wilson an exclusive right, for the duration of the agreement, to use the name Grishko in connection with the sale of the Goods in USA. I.M. Wilson relied on the documents of trademark ownership to obtain its first GRISHKO trademark registration in November 1993. Some years later, the USPTO declined to register Mr. Grishko’s applications for the marks GRISHKO and NICOLAY GRISHKO due to the existence of I.M. Wilson’s registration. After learning that he was barred from registering the GRISHKO and NICOLAY GRISHKO marks, Mr. Grishko called Irene to revoke his consent to I.M. Wilson owning the GRISHKO trademark registration and to demand that I.M. Wilson transfer the registration to him. Instead, I.M. Wilson and Grishko allegedly reached an agreement that I.M. Wilson would not renew that registration upon its expiration. Apparently in accordance with this agreement, I.M. Wilson did not file a renewal application, resulting in the cancellation of the registration in September 2004.

Due to the deterioration of the parties’ relationship, Grishko issued a Notice of Termination of the 1992 Agreement in April 2016, with termination effective “at least as early as March 1, 2017”.These counterclaims can broadly be trifurcated into (1) Lanham Act and common law claims arising from I.M. Wilson’s use of disputed marks and trade dress, (2) claims arising from the parties’ since-terminated licensing agreement, and (3) claims arising from I.M. Wilson’s actions while this litigation was pending.

IM Wilson urged the United States District Court for the Eastern District of Pennsylvania (“Court”)(I.M. Wilson, Inc. v. Otvetstvennostyou “Grichko” 500 F. Supp. 3d 380 (E.D. Pa. 2020)) to dismiss the 6 claims since Grishko cannot establish ownership of the registered house mark or the unregistered model marks, to which the Court denied. The Court gave compelling reasoning behind its judgment such as the writing of the Agreement of August 1992 is ambiguous and stated that the contested ownership of the model marks, sole mark, and trade dress is not foreclosed by the language of the August 1992 agreement. Furthermore, the Court finds, at least at the motion to dismiss stage, Grishko alleges enough facts that the relationship between the parties was that of a licensor and licensee.

The Court also rejected that the August 1992 letter clearly transferred ownership of the model and sole marks and trade dress. Accordingly, the incontestable federal registrations for the GRISHKO house mark do not squarely determine the ownership of these other marks. The Court further disagreed with IM Wilson when he moved to dismiss Grishko’s counterclaims alleging federal and state dress infringement on the grounds that Grishko fails to establish that the alleged trade dress is protectable. I.M. Wilson first argues that because Grishko has insufficiently pled ownership of the model marks and has not pled ownership of the GRISHKO marks, neither can be part of Grishko’s trade dress. For the reasons articulated above, the Court found that Grishko has pled ownership of the model marks and, accordingly, will consider these marks as part of the alleged trade dress. Similarly, based on Grishko’s alleged licensing relationship and the ambiguity surrounding the August 1992 writing, the ownership of the GRISHKO house mark is a matter not ripe for resolution at the motion to dismiss stage.

Finally, I.M. Wilson urges the Court to find that Grishko has not adequately alleged secondary meaning. “Secondary meaning exists when the mark is interpreted by the consuming public to be not only an identification of the product or services, but also a representation of the origin of those products of services”.At the motion to dismiss stage, the Court found that Grishko plausibly alleged secondary meaning by alleging length of use, exclusivity of use, the size of the company, the alleged fact of copying, and the number of sales.

For these reasons, Grishko has satisfied the threshold elements to plead its trade dress is protectable for purposes of alleging federal and common law infringement, unfair competition, and trademark dilution.

With regards to the 3rd issue, which were the actions performed by IM Wilson while this suit was pending, the Court was to decide whether the conditions to a defamatory suit were met, but the Court found that the statements made by IM Wilson were not of defamatory nature as they did not impute to the corporation fraud, deceit dishonesty, or reprehensible conduct in its business in relation the said products.

Finally, the Court granted in part and denied in part IM Wilson’s motion to Dismiss or Strike Defendants’ Counterclaims. The Court conclusively denied the request of Grishko to amend their counterclaims since the said party has had three opportunities to do so.

Author: Saransh Chaturvedi an associate at Khurana & Khurana, Advocates and IP Attorney,  in case of any queries please contact/write back to us via email saransh@iiprd.com

Leave a Reply

Categories

Archives

  • November 2024
  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010