Intellectual Property Law

Court Enjoins Beauty School from Using Competitor's Marks in Signs and Ads

By Michael Atkins

The Western District today found it was likely the plaintiff beauty school could establish at trial that the defendant beauty school took out ads in the Yellow Pages, posted signs on an office suite, and obtained business licenses using plaintiffs’ trademarks, constituting trademark infringement and a violation of the Washington Consumer Protection Act.

“Plaintiffs are international companies which operate over 200 hairdressing salons and academies under their ‘Toni&Guy’ brand including an academy in Bellingham, Washington. Defendants own and operate Bellingham Beauty School in Bellingham, Washington. Upon learning of the possibility of the opening of an authorized Tony&Guy franchise in Bellingham, Defendants registered ‘Toni & Guy Hairdressing Academy, Inc.’ as a for-profit corporation with the State of Washington in November, 2007. Defendants’ Tony & Guy Hairdressing Academy, Inc. then obtained a business license with the City of Bellingham and the State of Washington and a listing in the Yellow Pages for a telephone number which is never answered. These advertisements and business registrations list 203 W. Holly Street, Suite 206, Bellingham Washington as the location of the academy. This location is an office suite which bears ‘Tony & Guy Hairdressing Academy’ signs but remains empty with locked doors.

“An authorized Tony&Guy Hairdressing Academy opened in Bellingham in November 2008. Sometime before March 2009, Plaintiffs learned of Defendants’ use of the ‘Toni & Guy’ name. On April 14, 2009, Plaintiffs filed a complaint alleging violations of sections 32 of the Lanham Act (15 U.S.C. § 1114), 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), and Washington’s Consumer Protection Act.”

These findings, Judge Marsha Pechman concluded, were sufficient to support a preliminary injunction.

“The court finds that Plaintiffs have demonstrated a likelihood of success on the merits of some of its claims and that Plaintiffs stand to be irreparably injured if Defendants are not enjoined from using the Toni & Guy mark. The Court also finds that Plaintiffs have raised a serious question concerning public policy and that the balance of hardships scale tips in Plaintiffs’ favor. Plaintiffs’ prayer for relief includes enjoining Defendants from using the marks, removing local signage, and transferring the telephone number listed in the Yellow Pages to Plaintiffs. These actions would reasonably prevent further harm by removing the infringing marks from the public sphere. These actions should be accomplished within three days of the receipt of this order.”

It’s worth noting that defendants responded to plaintiffs’ motion by filing affidavits but did not file an opposition brief.

The case cite is MBL/Toni&Guy Products, L.P. v. Kennard, No. 09-501 (W.D. Wash. June 29, 2009) (Pechman, J.). 

Full disclosure: STL’s firm represents the plaintiffs in this case.

Full post as published by Seattle Trademark Lawyer on June 30, 2009 (boomark / email).