Banner & Witcoff successfully defended firm client C&F Enterprises’ free speech rights in a trademark litigation against OBA Canvas Co. regarding OBA’s mark A MERMAID SLEEPS HERE in the U.S. District Court for the Eastern District of Virginia.
OBA asserted that C&F Enterprises’ use of the phrase “Mermaid Sleeps Here” on the face of a decorative pillow was an infringement of OBA’s rights in the trademark A MERMAID SLEEPS HERE for Pillows. In the wake of the Supreme Court’s decision in Matal v. Tam (aka, The Slants case), one area of tension that remains between trademark rights and free speech is the doctrine of aesthetic functionality, where a mark is used not as a trademark, but rather is used aesthetically or artistically on another article. Banner & Witcoff successfully argued that C&F Enterprises’ use of the phrase was decorative in nature, and not a trademark use to indicate the source or origin of the goods in question, and as a result achieved a successful settlement that allows C&F Enterprises to continue with business as usual.
Banner & Witcoff attorneys Ross A. Dannenberg, Christopher B. Roth and R. Gregory Israelsen handled the case.
The case was C&F Enterprises v. OBA Canvas Co. et al., E.D.Va, No. 1:17-cv-00512.