Is There Room on the Internet for Two "Funky" Chicks?

In a colorful legal battle between “personal” bloggers, “Funky Brown Chick” will have to show more than surface similarities between her eponymous website and “funkyblackchick.com” to prevail on her trademark infringement claims.

Both “chicks” write about their lives on their blogs, with “Funky Brown” (aka Twanna A. Hines) describing herself as “a New York-based writer, sociologist, blogger and sexpot.” The rather more demure “Funky Black” (aka Yesha Callahan) says she is “a 30-something blogger based out of the DC Metro area.”

Their lives and blogging styles appear quite different -– the more high-profile Hines mixes with celebrities and dispenses sex and dating advice. But Hines filed a suit in Maryland last week, accusing Callahan of “using the confusingly similar mark Funky Black Chick in connection with services strikingly similar to those provided by Plaintiff under Funky Brown Chick.”

The suit seeks injunctive relief and unspecified damages for false designation of origin and unfair competition under the federal Lanham Act and trademark infringement under Maryland law.

“Defendant's unauthorized use of the Funky Black Chick designation in connection with Defendant's service is likely to cause and has actually caused consumers to mistakenly believe that Defendant has an affiliation with Plaintiff, or that Defendant's is sponsored or approved by Plaintiff, or that Defendant is otherwise associated with Plaintiff,” the complaint says.

In applying the “likelihood of confusion” test, courts look, among other things, at the similarity of the two marks, the similarity of the goods and/or services the marks identify, and the defendant's intent. The precedent of an Internet domain name case involving the late Rev. Jerry Falwell suggests Hines will have a hard time meeting that test.

Christopher Lamporello did not infringe on Falwell's trademark rights by operating the "fallwell.com" gripe site, the 4th U.S. Circuit Court of Appeals ruled, in part because “although Lamparello and Reverend Falwell employ similar marks online, Lamparello’s website looks nothing like Reverend Falwell’s; indeed, Lamparello has made no attempt to imitate Reverend Falwell’s website.”

“Most importantly, Reverend Falwell and Lamparello do not offer similar goods or services,” the court stressed in Lamporello v. Falwell, 420 F.3d 309 (2005).

“Funky Black” provides services “strikingly similar” to “Funky Brown's” only in the superficial sense that they are both African-American women blogging about their lives. In recent postings, Hines opined on the weighty subject of “Men Who Like BBW Sex” while Callahan named Sarah Palin her “Dumbass of the Week.”

Callahan's site, moreover, displays her domain name as [Fung'ke] [Blak] [Chik] and also includes the disclaimer, “This blog and writer is not associated with any other 'funky (insert random color or ethnicity name) chick' (or similar) domains, blogs or screen names.”

As a Wisconsin judge recently ruled in a similar case,

While the effectiveness of a disclaimer may generally be a question of fact, “a disclaimer expressly declaring that the seller is ‘not affiliated’ with the owner of the trademark or is ‘not an authorized distributor’ of the trademark owner’s products has been held to be an effective means of preventing confusion in the minds of consumers as to affiliation with the owner of the trademark.” Standard Process, Inc. v. Banks.

By Matthew Heller
11/15/08