Halcyon vs. Fruit of The Loom

March 2, 1998

Re: Infringement of FRUIT OF THE LOOM® trademark

Dear Mr. Styn and/or Web Page Originator/Poster:

I am Corporate Counsel to Fruit of the Loom. It has come to our attention that you have posted a web page which includes a reference to our world famous trademark, FRUIT OF THE LOOM. Such use constitutes an illegal infringement of our federal trademark registration for our FRUIT OF THE LOOM® trademark. This letter serves as formal demand that you immediately cease and desist any infringing use of any of our trademarks or intellectual property on your web pages or other materials. For your reference, the infringing web page we are aware of is located at @HTTP:// WWW.PREHENSILE.COM /TALES/ MEATLOOM/ FRUITLOOM.HTM.

Since at least 1851 our company and its predecessors have used the trademark FRUIT OF THE LOOM® either alone or in combination with a fruit design, in connection with the manufacture, distribution, marketing and sale of an extensive line of apparel products. These marks are protected by numerous federal trademark registrations which have become incontestable under federal law. Furthermore, we have extensively used and promoted these marks at considerable expense and have acquired valuable goodwill and public recognition therein. Due to such use and the fame and notoriety of our marks, we assume that you were aware of our rights in the marks when you posted your web page.

Our trademarks, such as FRUIT OF THE LOOM®, are among our company's most valuable assets and we must protect these assets from diminution in value. To the extent that persons or entities not affiliated with our company begin using marks which are the same as or similar to our marks, this can result in a likelihood of confusion for

consumers and the public, and can dilute the value of and/or tarnish our marks. For these reasons, we must take appropriate action to protect our valuable rights.

To amicably resolve this matter to our satisfaction, we require that you take the following actions:

(1) immediately cease and desist from any and all use of the FRUIT OF THE LOOM trademark and/or variations thereof; and

(2) promptly send written notice to us that you agree to comply with this request, stating that you will no longer use any of our marks or intellectual property on your web pages or otherwise in an infringing manner.

Please contact me within five (5) days after your receipt of this notice to advise whether you will immediately cease your infringing activities. If we do not hear from you by that time, we will assume that you do not wish to reach an amicable resolution to this matter, and we will institute proceedings to discontinue your use of the domain name and take appropriate action to enforce our rights.

Sincerely yours,

Ross W. Blair
Corporate Counsel
March 3, 1998

Dear Ross W. Blair
Corporate Counsel for Fruit of The Loom

I received your cease and desist e-mail and, frankly, I'm a bit confused. Could you please explain to me how my webpage infringes on your trademark? (text of article is included at end of e-mail) The article in question is clearly parody. I am having trouble seeing how my article does you any damage. I merely publish an online magazine for non-commercial purposes. I do not sell underwear, t-shirts, or fruit costumes. I doubt anyone is confusing your esteemed company with my attempt at humor.

thanks for visiting www.prehensile.com Where there is a new Tale every Monday (mostly non-underwear related)
March 4, 1998
Dear Sir,
We disagree strongly with your legal analysis. Your sexually related trademark "parody", as you call it, infringes and dilutes our famous trademarks. Under federal and state trademark lay your infringement and parody of our good marks, names, logos and commercial symbols infringes and dilutes our famous trademarks. Victims of your kind of trademark "parody" often sue for both trademark infringement and dilution, court costs, damages and attorneys' fees. I seriously question the non-commercial use of your site, since it obviously is your "calling card" and/or advertisement for your services. The Federal Trademark Dilution Act gives us a powerful tool to pursue you if you persist in posting your MEAT OF THE LOOM web page.

Let's amicably resolve this matter - please take my advice in my letter to you dated March 2, 1998. Please contact me in the next five days to advise whether you will be ceasing your infringing and diluting activities. This matter merits your immediate attention.

If I do not receive a timely acknowledgement that you want to resolve this matter amicably by removing the problematic text from your web pages and agreeing not to infringe or dilute our famous marks prospectively, we will institute proceedings to enforce our rights.
Ross W. Blair rblair@fruit.com
Corporate Counsel Direct Line: (502) 782-1026, x2169
Fruit of the Loom Fax: (502) 781-5762
March 8, 1998

Dear R. Blair, I, too would like to amicably resolve this matter. However, I still don't understand how I am doing you or your marks any harm. You debated the non-commercial nature of www.prehensile.com. I can assure you that I do not make any money off Prehensile Tales, nor has it ever led to any other sort of outside work, as you implied. If you know of ways I could profit from this on-line hobby, I would love to hear your suggestions. Also, can I get clarification on a few other things that concern me? -Can you specify the "problematic text" from the article? -You mentioned that you would institute proceedings to "…discontinue" my use of the domain name, "prehensile.com." I fear that I am not understanding this threat correctly. How would you go about this? -The lawyer friends I have spoken to have also been unable to see what I am doing wrong. Could you please site me cases or statutes showing that what I'm doing is unlawful.
Thank you,
John Halcyon Styn
March 9, 1998

You state you want to amicably resolve this matter. Please take down the material on your web pages which is problematic for Fruit of the Loom. Please advise me whether or not you will do so in the next 5 days. We have no interest in your web page site or domain name, just deletion of the materials that cast our trademarks in a negative light. If you sincere about you offer to amicably resolve this matter, please remove the materials we find offensive.

-- Ross W. Blair rblair@fruit.com
Corporate Counsel Direct Line: (502) 782-1026, x2169
Fruit of the Loom Fax: (502) 781-5762
March 13, 1998

With the help of a lawyer, I filed a complaint with the court.
I decided to sue for "Declaratory Relief." Which basically means that a Federal Court would recognize that I am within my rights to publish the "Meat of the Loom" article.

How quickly the defendent becomes the plaintiff.
The legal document is here.
March 17, 1998
In response to your overwhelming support and an impending Lawsuit, Fruit of the Loom sent me far more friendly letter. Keep in mind, they knew I would publish it and they used it as a bit of a PR piece.
Notice the change in tone from the previous e-mails, "Oh, you're gonna fight back?...ha, then lets be pals."

Dear Mr. Styn:
Based on the information you have provided, and on our investigation, Fruit of the Loom does not intend to pursue legal action in this matter. Actually, our Legal Department was putting together a no harm-no foul letter at the time we heard you’d filed a declaratory judgment action. Now that this is in litigation, however, Legal is required to communicate through your counsel. While we do have local counsel in San Diego, and would love to find an excuse to get out there to see the Padres and check out Torrey Pines, we don’t see any reason to take up a federal judge’s time with this.

We hope you understand that, to preserve trademark rights, owners are required by the courts to vigorously police their marks against unauthorized uses. It’s not that we don’t have a sense of humor -- it’s that we can’t afford to laugh off potentially infringing uses of the company’s most valuable asset - our trademark. We do note that your web page contains a copyright notice, which would indicate that you intend to restrict others from republishing your original content. With any luck, you won’t have to enforce your rights. We do want you to know that, while this subject has generated some excellent, often funny e-mail discourse, we have received some hate-filled, threatening e-mail messages that cause us concern. We will file them under “Fruits” or “Nuts,” and let’s all hope the First Amendment withstands their support.

Again, we do not intend to pursue legal action against you over uses of the Fruit of the Loom trademark and logo on the “Meat of the Loom” web page. We will examine any uses of our marks and logos on a case-by-case basis, and any change in the “non-commercial” nature of a use would certainly affect our position in a given situation. To those in cyber-land who might be listening, we want to make it clear that no un-fair use of our trademarks will be tolerated. Also, “spamming” and actual threats will be reported to the authorities.
Fruit of the Loom

I think the score is
web community = 1
large corporations = 0

I'm dropping my suit against them and issuing this press release.

We win.

I'd love to hear your reactions.

Prehensile Tales prefers boxers.

Copyright © 1997 Prehensile Tales.

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