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No burying the hatchet in Lizzie Borden trademark dispute

Sign for Miss Lizzie's Coffee

From the complaint: The less bloody of the two Miss Lizzie's Coffee signs.

The operator of the Lizzie Borden House in Fall River has an axe to grind with the way the owner of a new coffeehouse next door named the place Miss Lizzie's Coffee and put up signs with blood-drenched hatchets.

In a trademark suit filed today in US District Court in Boston, US Ghost Adventures of Williamsburg, VA, says Joseph Pereira is clearly trying to hack off some of its business by using a name that makes it seem like the place, which opened last month, is associated with the B&B and museum it runs just one door down, and it is not going to stand for it:

"Miss Lizzie's Coffee," based on its name, logo/graphics, and proximity to Plaintiff's place of business, deceptively confuses unsuspecting customers by creating a false association that Defendants' services are affiliated with, approved by, and/or licensed from Plaintiff. ...

For instance, given the close proximity of Plaintiff and Defendants' businesses, consumers who attempt to patronize "Miss Lizzie's Coffee," upon information and belief, inquire as to the suspected association between the two entities. Guests of Plaintiff's bed and breakfast, upon information and belief, have inquired as to Plaintiff's suspected association with "Miss Lizzie's Coffee" as well.

On information and belief, consumers are likely to continue to be confused as to the source of the respective parties' offerings and the affiliation between Plaintiff and Defendants.

Mr. Joseph Pereira has made public statements indicating that the location of "Miss Lizzie's Coffee" was chosen specifically due to its immediate proximity to Plaintiff's business. Mr. Pereira noted his original location was to be in the Fall River train station.

By causing actual confusion, and continuing to cause a likelihood of further confusion, mistake, and deception, and because Plaintiff has no ability to control the quality of the services offered by Defendants, Plaintiff is in danger of irreparable harm to the goodwill symbolized by the Marks, their registrations, and the reputation for quality that they embody.

US Ghost says it has been using Lizzie Borden's name - and an axe - in trademarked materials, since at least 2013, so it has priority over use of the name as it seeks to carve out a part of the Fall River tourism and hospitality dollar by promoting what it calls the Mystery, that is, the question of whether Lizzie Borden gave her mother, well, you know, as well as by selling souvenirs such as hand axes stained with what appears to be blood and, of course, crazy-eyed Lizzie Borden bobble-head dolls.

The company is seeking an injunction declaring that it has the sole right to use Borden's name and an axe on Second Street in Fall River, that Miss Lizzie change its name, publicly apologize and take out ads explaining the folly of its ways. Plus, the company wants Miss Lizzie's to pay treble damages based on all the profits the coffeehouse has made since it opened last month as well as enough in financial damages to make its owner think not just twice but at least 41 times before ever trying something like that again.

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Comments

US Ghost is asking too much IMHO but IANAL.

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It's not unusual for the plaintiff in a case like this to ask for the moon, knowing the court will likely walk their request back some.

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I don't see how you could possibly trademark the name "Lizzy."

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Heck Adam likely has the mark for Universal Hub despite its poetic origins. You'd be free to take out a trademark for "John's Coffee" if you want, though you'd probably find your mark limited to a single town or, as in this case, street.

The whole point of trademarks is to avoid confusion in the marketplace. The question in this case is, "Would a reasonable person assume that 'Lizzie's Coffee' is affiliated with the nearby 'Lizzie Borden House' based on their proximity and similar branding"? There is also a question of whether the Lizzie Borden House has exclusive rights to market itself based on Lizzie Borden, but I strongly suspect that they are trying to sidestep that issue by focusing on the similarly to the modern branding instead of just the name.

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Look her up. Yep we all know who she was.

But her name, any references to the books and stories in them.. you gotta pay the McBride family a ton of money to use them.

LIW only had one child, Rose. Rose did not have any children. When LIW died, the rights were left to her daughter Rose, who died 10 years later. Rose left the rights to Roger MacBride, who had no children himself. When MacBride died in 1995, it went to his heirs.

So yes, you can trademark a name.

PS - Just love Wiki how it says MacBride was co-producer television program. His name never appears anywhere in the credits. The rights were purchased, and he had no say in the show. Someone added that to Wiki.

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"Laura Ingalls Wilder"

Quite a difference between that and Lizzy.

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They aren't claiming that nobody else can use the name "Lizzy" (or "Lizzie") anywhere, or for anything. They're saying nobody else should be allowed to use the name in that location, or in a way that looks like the two businesses are connected.

Nobody's likely to confuse Lizzy's Ice Cream, in Waltham, with the Lizzie Borden House in Fall River. And I'd be very surprised if the Lizzie Borden House even tried suing them. But the ax logo, plus the name and location, do suggest Lizzie Borden--the question is whether a court thinks actual or potential customers are likely to be confused.

That doesn't guarantee they'll win the case, of course. But it's not a ridiculous lawsuit.

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If anything the Lizzie Borden House copied its logo from Harry Potter

https://lizzie-borden.com

Don't see any confusion. Just competition.

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The plaintiff's complaint should be dismissed, the plaintiff's business should be dissolved, the plaintiff should be pilloried, and IP laws should be repealed entirely and replaced with severe restrictions on nonsense like this.

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It protects people by allowing them to attach reputation to names so that they can tell which products are less likely to be low-quality (sometimes dangerous) imitations.

I don't think you'd actually be happy if trademark were repealed.

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But in this case, the plaintiffs are correct. The coffee shop opened up two doors down and picked a similar name and logo.

It would be like Cornwalls in Kenmore Sq renaming themselves to "Eastern Metric"

The coffee shop could have at least gone with another name such as, "That's a Latte to Axe"

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The coffee shop picked a location near the famous Lizzie Borden murder. The fact that someone turned the house into a museum/bnb doesn't give them exclusivity over everything related to Lizzie Borden. Even if the plaintiffs tried to register a trademark for their business, their registration would exclude exclusive rights to the name "lizzie borden" and only cover the "lizzie borden house".

The logo doesn't appear similar at all.

Better analogy would be someone in the North End opening up "Paul Revere Cafe" and getting sued by the Paul Revere House.

The plaintiffs could've just wait a year and the coffee place would've gone out of business on its own anyway. Cafes are bad investments.

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As a writer and author (and very small business owner) who has received a significant portion of my life's income from copyrighted works that I created, I must respectfully disagree with the assertion that IP laws are a cancer.

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the plaintiff's business should be dissolved, the plaintiff should be pilloried

Small government advocate has entered the chat.

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No respect for the dead.

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Assuming they open up a coffee shop within throwing distance of the Lizzie Borden House.

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What actual damages is the plaintiff trying to say occur? Coffee shop is not offering room and board, or museum activities so how can they be affecting that business outside of each person's customers asking about it? Does the BNB offer coffee and pastries to go?

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Just so you don't have to scroll up and read the article you're replying to:

Miss Lizzie's Coffee," based on its name, logo/graphics, and proximity to Plaintiff's place of business, deceptively confuses unsuspecting customers by creating a false association that Defendants' services are affiliated with, approved by, and/or licensed from Plaintiff. ...

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So apparently the museum is a bit of troll. They somehow snatched up the trademark for LIZZIE BORDEN in the 1990s and have been suing people over it ever since:

https://madisonian.net/2009/08/26/lizzie-bordens-hometown-museum-wins-ri...

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Too soon.

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What a strange "brand" to be protecting...

That Lizzy coffee was killer!

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You have to actively protect your trademark against challenges or risk losing it; even if it is something as silly-seeming as this. Trademark is a weird facet of IP law in this respect.

Agree with the poster above though, the courts would probably view the defendant's claim more favorably if it wasn't literally two doors down from the house itself. Likelihood of confusion is a big deal in TM law, so this is already starting off at a disadvantage.

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