It’s not optimal weather here in NYC today for wearing only a cowboy hat, boots, and briefs… in Times Square. But in better weather it’s likely that you have seen (or taken a picture with) the Naked Cowboy. He performs regularly in Times Square wearing only his cowboy hat, boots, briefs and a guitar. The words “Naked Cowboy” are emblazoned on the back of his briefs, on his hat and on his guitar…and the “$” is painted on his boots. Not only does he wear his brand… but he has also registered it as a trademark with the USPTO for Entertainment Services (Reg. No. 3792432). [Click here for photo]
In an attempt to challenge CBS for including a look-a-like character on their daytime show “The Bold and The Beautiful,” the Naked Cowboy sued CBS for trademark infringement. In an episode of the “The Bold and The Beautiful,” one of the characters appeared wearing only briefs, a cowboy hat, and boots while singing and playing the guitar…. and this prompted the Naked Cowboy to sue CBS. An interesting and critical detail to the lawsuit is that the words “Naked Cowboy” did not appear anywhere during the episode, the words were not on the look-a-like, nor were they spoken aloud. Nor did the look-a-like have “$” painted on his boots. Since the words “Naked Cowboy” were not used by CBS, the court held that there was no trademark infringement.
Additionally, the Naked Cowboy challenged the purchase from YouTube of adword advertising for the term “Naked Cowboy”… as well as the use of “Naked” and “Cowboy” as searching TAGS on YouTube. The court held that these actions did not violate the Naked Cowboy’s trademark because the words were not placed on any goods or containers or displayed in a way to indicate source or sponsorship.
If you were wondering if you would violate Trademark Law if you wore only a cowboy hat, boots and briefs… the answer is… NO. This is something you are free to add to your to-do-list. (you won’t violate Trademark Law, anyway)
BY: Vanessa Kaster, Esq., LL.M.
The case: Naked Cowboy, d/b/a Naked Cowboy Enterprises v. CBS and Bell-Phillip Television – Case No. 11 Civ. 0942–BSJ–RLE. Opinion issued by the S.D.N.Y. on February 23, 2012. See also: http://dockets.justia.com; @iplegalfreebies and www.kasterlegal.com.