Unregistrable
Even Cowgirls Get the Trademark Blues
Trade dress disputes come in all shapes and sizes. But what if the alleged trade dress involves no dress at all? That’s the case in an ongoing Big Apple brouhaha being played out on the streets of Times Square and the federal courthouse. For the last ten years, Robert Burck, a.k.a the “Naked Cowboy,” has donned white briefs, cowboy boots, and a cowboy hat; strapped on an acoustic guitar; and then set out to serenade tourists and traffic-dodgers beneath the bright lights of the big city in the heart of Manhattan’s theater district. And he’s given the Postal Service a run for its money in the “neither snow, nor rain, nor gloom of night” department—braving the elements without so much as a scarf or earmuffs added to his otherwise skimpy ensemble.
But while his mother might bemoan his lack of good sense in the wardrobe department, she no doubt would marvel at his trademark savvy. In 2009, Burck sued Clear Channel Communications after discovering that one of its radio stations had outfitted an employee in Naked Cowboy garb and then posted 51 videos of the ersatz unclad troubadour on YouTube. He also sued candy titan Mars, Inc. over an animated billboard in Times Square that showed anthropomorphic M&Ms decked out in white underpants, cowboy hat, and boots. Both cases settled out of court.
Now, a former stripper and comedian named Sandra Brodsky, a.k.a. Sandy Kane, is the latest target of Burck’s Naked ambitions. Following in the Naked Cowboy’s well-trodden boot steps, Kane’s been seen traipsing through Times Square wearing nothing but a red, white, and blue bikini, boots, hats, and a guitar bearing the words “I 
Naked Cowgirl.” Bystanders and passers-by have been amused. Burck is not.
First, he sent his distaff counterpart a cease-and-desist letter demanding that she either take a license from the Naked Cowboy franchise or put some clothes on and drop the Naked Cowgirl name. She refused. So Burck did what any red-blooded American cowboy would do: he rounded up a posse of lawyers and sued to protect his property—intellectual property, that is.
In a complaint filed in the Southern District of New York, the Naked Cowboy lays bare a passel of IP claims running the gamut from straight trademark infringement to dilution of an allegedly famous trademark. According to Burck, Kane’s activities, including posing for a photo while making an obscene gesture, have tarnished the Naked Cowboy brand and have resulted in a likelihood of confusion.
When he decided to take Kane to court, Burck probably was thinking of Henry Fonda’s classic line from Once upon a Time in the West: “People scare better when they’re dying.” Or, in this case, when they’re sued. But like a gunslinger staring down the law at high noon, Sandy Kane remained undaunted and shot back with claims of her own. Raising the stakes by trying to strip Burck of his mark, Kane alleges that Burck applied to register the Naked Cowboy trademark on a corral full of goods and services that he never had any intention to offer, such as circuses and online computer games. Kane also alleges that the Naked Cowboy mark is generic. That’s one big hand for the little lady to play.
In Cowgirl in the Sand, Neil Young sings of a woman who’s “old enough now to change [her] name.” Sandy Kane may very well be old enough to change hers, but as the Naked Cowboy is learning the hard and expensive way, Sandy Kane is one cowgirl who’s not about to change hers without a fight.
