Trademark Attorney Morris Turek

Morris E. Turek

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Naked Cowboy v. Naked Cowgirl: A Trademark Dispute Fit for a Nudist Colony (and New York City)

If you happen to be from New York City or perhaps a frequent tourist there, you may have come across Robert Burck in your journeys through the Big Apple.  Burck, who is best known for strumming his guitar on the sidewalks of Times Square wearing only boots, a 10 gallon hat, and tighty-whities, has been using the name NAKED COWBOY since at least as early as 1998 in connection with his entertainment services.  According to his official bio, Burck has performed throughout the U.S. and internationally, and has been featured in various commercials, music videos, and television programs, not to mention being named “The Ambassador of New York Tourism” (please say it ain’t so).  Furthermore, he has apparently franchised the NAKED COWBOY name to exhibitionists in other cities across the United States for about $5,000 per year (money well spent, I’m sure).  Feel free to check out Burck’s website to learn more about him and to see whether you do, in fact, have a thing for partially nude cowboys who make music rather than rope steer.

Just when you thought New York City only needed (and frankly only wanted) one nude buckaroo roaming the streets entertaining and/or scaring and/or mortifying those who happen to come across him, here comes comedian and ex-stripper Sandy Kane (whose real name is Sandra Brodsky) to provide New Yorkers even more rancher-in-the-raw festivities.   According to a story in the New York Post, the bikini-clad Kane has been appearing and performing in Times Square for several years calling herself THE NAKED COWGIRL.  The story reports that Kane and Burck used to have a good relationship but it turned sour when Kane refused to sign a “Naked Cowboy Franchise Agreement” and recorded a song called “The Cowboy” with another male counterpart.  Burck is now threatening to sue Kane for trademark infringement stemming from her use of the name NAKED COWGIRL in connection with her live music and comedy performances.

Like most ordinary people would after reading this article, I surfed over to the Trademark Office’s website to see whether Burck happened to own a federal trademark registration for NAKED COWBOY.  Sure enough, he applied to register NAKED COWBOY on July 15, 2009 and was granted a registration for the trademark just over a month ago on May 25.  My search also revealed that Burck owned a registration for NAKED COWBOY dating back to 2002, but is was canceled in June 2009 for failure to file a declaration of continued use with the Trademark Office.  Hey, keeping those skin-tight briefs Clorox-white would be enough for any man to forget to renew his trademark registration!

In all seriousness, I think Burck has a pretty strong case against Kane for trademark infringement and unfair competition, especially considering the appreciable amount of fame and recognition Burck’s NAKED COWBOY name enjoys throughout New York and the exposure he’s had throughout the U.S.  Clearly, Burck doesn’t own the concept of dressing up (or is it undressing?) like a cowboy and performing music in the middle of Times Square.  Any freak-show is free to do that.  However, the issue is that Kane’s use of the name NAKED COWGIRL tends to imply an association or affiliation with Burck such that the public may mistakenly assume that Burck sponsors or endorses Kane and her performances.

But, Kane might have some leverage with Burck after all.  In reviewing Burck’s trademark registration for NAKED COWBOY, I note that the mark is registered for the following slew of services:

Educational and entertainment services, namely, providing motivational and educational speakers; Entertainment in the nature of circuses; Entertainment in the nature of dance performances; Entertainment in the nature of live performances by a musical personality/performer; Entertainment in the nature of live radio personality performances; Entertainment in the nature of on-going television programs in the field of news, comedy, variety; Entertainment in the nature of prerecorded sex-oriented, joke-oriented, insult-oriented messages by telephone; Entertainment in the nature of television news shows; Entertainment in the nature of live musical group, television comedy series, ethnic festival; Entertainment services, namely, live, televised and movie appearances by a professional entertainer; Entertainment services, namely, personal appearances by a celebrity, radio-TV personality, actor, movie star, model, sports celebrity; Entertainment services, namely, providing a radio program in the field of entertainment, comedy, motivational speaking via a global computer network; Entertainment services, namely, providing a television program in the field of entertainment, comedy, motivational speaking via a global computer network; Entertainment services, namely, providing an on-going radio program in the field of news, comedy, variety; Entertainment services, namely, providing an on-line computer game; Entertainment, namely, a continuing comedy, variety show broadcast over television, satellite, audio, and video media; Entertainment, namely, live music concerts; Entertainment, namely, live performances by musical bands; Entertainment, namely, television news shows; Multimedia entertainment software production services; Radio entertainment production; Radio entertainment services, namely, radio programs featuring performances by a person or individual, fictional character, radio personality, TV personality

As far as I can tell from Burck’s website and bio, it does not appear that Burcke actually has ever rendered, or is currently rendering, the services I have bolded above.  Therefore, Burck’s registration may be subject to cancellation on the basis of fraud on the Trademark Office in that Burck declared in his application that the NAKED COWBOY mark was in use in connection with all of the services when perhaps the mark was actually only in use in connection with some of the services.  Kane may be able to use the threat of a cancellation proceeding to help her reach a satisfactory settlement with Burck that doesn’t include paying Burck $5,000 per year to be a Naked Cowboy franchisee.  Just a thought.

Whatever happens, the naked truth is that (1) Kane shouldn’t use the NAKED COWGIRL name if there is a likelihood of confusion with Burck’s prior use of NAKED COWBOY, and (2) Burck, well, he should just put on some pants already.

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One Response to Naked Cowboy v. Naked Cowgirl: A Trademark Dispute Fit for a Nudist Colony (and New York City)

  1. […] a month ago, I wrote about a trademark dispute that was brewing between Robert Burck (a/k/a “The Naked Cowboy”) and Sandy Kane (a/k/a […]

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