About 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 “The Naked Cowgirl”). As a refresher, Burck is known for hanging out in Times Square and strumming his guitar wearing only cowboy boots, a cowboy hat, and tight-fitting briefs (you know, he should really look into getting an endorsement deal with Hanes or Fruit of the Loom). According to his official bio, Burck started using the name NAKED COWBOY on Christmas Day 1997 and very recently obtained a federal registration for NAKED COWBOY for a variety of entertainment services (although he did have a prior registration dating back t0 2002 that was canceled for failure to file a declaration of continued use with the Trademark Office). Burck has also franchised the name NAKED COWBOY to other naked cowboy wannabes located across the United States for about $5,000 per year. And, yes, I do find it hard to believe that there are Americans out there who would pay $5,000 a year for the “privilege” of using the NAKED COWBOY name while publicly playing a guitar in practically nothing but their birthday suits. I guess that college education for the kids will just have to wait.
Sometime long after Burck started using the NAKED COWBOY mark in connection with his services, ex-stripper and comedian Sandy Kane invaded Burck’s turf when she started performing her musical numbers in Times Square wearing only a bikini, boots, and a cowgirl hat, while referring to herself as THE NAKED COWGIRL. After Kane sanely refused to sign a “Naked Cowboy Franchise Agreement” and pay the required franchise fee, Burck threatened to sue Kane for trademark infringement stemming from her use of the name NAKED COWGIRL in connection with her live music and comedy performances. And that’s where the story ended.
Until now. On July 21, Burck filed suit against Kane in the United States District Court for the Southern District of New York (Case No. 10-5539) alleging trademark infringement, unfair competition, false advertising, dilution of a “famous” trademark, and pretty much every other related cause of action Burck’s attorney could think of. In the complaint, Burck asks that the court (1) issue an order barring Kane from using the NAKED COWGIRL trademark, (2) award monetary compensation in the form of actual damages suffered by Burck, as well as all profits Kane derived from her use of the NAKED COWGIRL mark, and (3) award Burck’s his costs and attorneys’ fees in bringing this lawsuit against Kane.
As I stated in my previous post, I believe Burck has a pretty strong case against Kane for a variety of reasons. But, I also suggested that Kane may be in the position to cancel Burck’s trademark registration for NAKED COWBOY on the basis of fraud on the Trademark Office because Burck declared in his application that the NAKED COWBOY mark was in use in connection with all of the services listed in the application when it seems that the mark may have only been in use in connection with some of the services. In my post, I pointed out at least 15 distinct services listed in Burck’s registration that do not appear to have ever been rendered by Burck under the NAKED COWBOY mark. I also just noticed that Burck represents in his registration that his first use of NAKED COWBOY was in 1991, but that his official bio located on his website claims that his first use of the mark was near the end of 1997. I’ll concede that Burck may be good at prancing around in his skivvies, but I think he should probably stay away from filing any more trademark applications without the assistance of a trademark attorney (and I happen to know a pretty good one…).
Well, Kane’s attorney obviously must have been reading my blog because on July 30, Kane played a little offense by filing a Petition for Cancellation against Burck’s registration for NAKED COWBOY, alleging fraud on the Trademark Office (Cancellation No. 92052835). The Petition (to which Burck’s infringement lawsuit is attached as an exhibit) requests that the Trademark Trial and Appeal Board cancel Burck’s registration due to materially false statements knowingly made by Burck during the prosecution of his trademark application, specifically those dealing with his declaration that the mark was in use on all of the services recited therein. Burck now has until September 8 to file a responsive pleading to the Petition for Cancellation. If Burck fails to do so, a default judgment will be entered against him and his registration will be canceled.
So, the saga continues and I’ll try to post updates about the case as I come across new information. And I’ll do so fully clothed. Trust me, I have no desire to be known as “The Naked Attorney.”