Hooters of America, et al. v. Nikki’s Escort Service, et al.[fusion_builder_container hundred_percent=”yes” overflow=”visible”][fusion_builder_row][fusion_builder_column type=”1_1″ background_position=”left top” background_color=”” border_size=”” border_color=”” border_style=”solid” spacing=”yes” background_image=”” background_repeat=”no-repeat” padding=”” margin_top=”0px” margin_bottom=”0px” class=”” id=”” animation_type=”” animation_speed=”0.3″ animation_direction=”left” hide_on_mobile=”no” center_content=”no” min_height=”none”][1] is a trademark litigation case you don’t see everyday.  Hooters delivered a day-after-Christmas surprise when the company’s trademark attorney filed suit against Nikki’s Escort Service.

Hooters trademark attorney alleges that Nikki’s Escort Service tarnished Hooter’s incontestable trademarks[2].  In order to do so, Hooters trademark attorney discusses the restaurants trademark and alleged trade dress rights.

For example, Hooters trademark attorney claims Hooters has trade dress protection in its “casual, beach-themed restaurants” that have “rough-hewn, beach shack-inspired interiors of its restaurants featuring brown and bring orange color, wood paneling, big-screen TV sports programming, and irreverent signage uniquely distinguish Plaintiffs’ establishments from other restaurants.”[3]

In addition, Hooters trademark attorney claims trade dress rights to the female Hooters uniform “featuring a white tank top with the Hooters Owl logo, and bright orange dolphin shorts.”[4]

The Hooters trademark attorney indicates that the approximately 375 Hooters restaurants also support organizations such as “Make-A-Wish Foundation, U.S.O. Special Olympics, American Diabetes Association, Juvenile Diabetes Foundation, Muscular Dystrophy Association, and Operation Homefront.”[5]

The complaint alleges that Nikki’s Escort Service and its owner Nikki Swafford used Craigslist to entice cocktail waitresses to join the escort service.  In particular, Nikki posted an ad on craigslist in Florida that said “NOW HIRING HOOTERS GIRLS $100 PER HOUR.”   In addition, the ad included a picture of a female waitress wearing the hooters uniform in a hooter restaurant.  One might think that a cease-and-desist request would end the dispute.  Most likely, the hooters trademark attorney also thought the same.  However, when the trademark attorney contacted Nikki’s, Ms. Swafford profanely responded and hung up.

To the Hooters trademark attorney’s surprise, the ad changed after the phone call.  The craigslist ad thereafter read “NOW HIRING KOOTERS GIRLS $100 PER HOUR” but left the picture of the Hooters waitress on the advertisement.  This likely infuriated Hooters.

Functional Uniform

A question that could be raised is whether Hooters can have any trade dress rights in the Hooters uniform.  Trade dress rights are only available when the trade dress is nonfunctional when taken as a whole.[6]  This raises the same question that existed in Dallas Cowboys, ETC v. Pussycat Cinema.[7]  In that case, the famous movie “Debbie Does Dallas” used a uniform confusingly similar to the Dallas Cowboys cheerleader uniform.  The Defendant trademark attorney argued a uniform is purely functional and therefore the uniform is not enforceable as a trademark.  The argument of the defendant’s trademark attorney fell flat because the Cowboys uniform consisted of an arbitrary combination of white vinyl boots, white shorts, a white belt decorated with blue stars, a blue bolero blouse, and a white vest decorated with three blue stars on each side of the front and a white fringe on the bottom.  That Court found that it was the particular combination of colors and collocation of decorations that distinguish the Cowboys uniforms from other squads.  According to the holding in Pussycat Cinema, it is more than likely that Hooters has trade dress rights on their very identifiable uniform.

Nominative Fair Use

Another argument the defendant’s trademark attorney could make is that Nikki’s use was nominative fair use.  Nominative fair use is permissible where the only word reasonably available to describe a particular thing pressed into the service.[8]  Nominative fair use is permissible because it does not implicate the source-identification function that is the purpose of the trademark.  In the instant case, Nikki’s is not suggesting that it is hiring women to work for Hooters or passing Nikki’s Escort Service off as a subsidiary of Hooters.  It appears clear that Nikki’s desires to hire employees away from Hooters.  On the other hand, Hooters trademark attorney could argue that the use of the photo with the word Hooters may be more than nominative fair use.    For example, in copyright fair use, taking more than was necessary can defeat a copyright fair use defense.[9]  However, if the use of the trademark refers to something other than the product, traditional fair use will govern.  Accordingly, defendant’s trademark attorney cannot argue nominative fair use.

Tarnishing Hooter’s Trademark

Tarnishing a trademark requires that the use of the trademark causes a negative association, linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context.  In the case of an editorial or an artistic parody, the use of the trademark or trade dress would not be actionable under an anti-dilution statute.  However, the instant case involves a purely commercial activity, all-be-it and in all likelihood an illegal commercial activity.

It is likely that associating the Hooters trademark and trade dress to an escort service will tarnish the hooters brand because it portrays “HOOTERS” in an unwholesome and unsavory context.  Specially, if the consuming public associates the Hooters brand to an escort service, the majority of people would be less likely to frequent the restaurant.  Moreover, the public may associate Hooters waitresses and the trademark and trade dress they bear as Escorts of Nikki’s.  For the foregoing reasons, it is likely that Hooters will win its case for trademark and trade dress infringement, as well as the argument that the use tarnished its trademark.

It will be interesting to watch this case play out over the coming months.

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