Foley Hoag* – Just this month, two disputes over the trademark rights to beauty pageant names were resolved, pending appeal. In World Pageants LLC v. Miss G-String International LLC, the Trademark Trial and Appeal Board (“TTAB”) dismissed an opposition to the registration of MISS G-STRING INTERNATIONAL because the opposer’s mark (MISS NUDE INTERNATIONAL) just wasn’t similar enough to cause confusion.

Meanwhile, in Organizacion Miss America Latina v. Ramirez, the Southern District of California granted a default judgment to the organizers of the MISS U.S. LATINA pageant, who alleged that their former Texas affiliate had gone rogue and started using the MISS LATINA TEXAS mark for unauthorized activities.

Disputes over beauty pageant names appear to be relatively frequent. Most pageants identify themselves with the traditional naming convention of an honorific (Mr., Miss, etc.) followed by one or two additional words delineating the pageant’s geographic scope and/or subject matter (such as the ethnicity or wardrobe of the contestants). When you combine this relatively narrow taxonomy with a crowded field of competitors, many of whom own multiple pageants and multiple pageant marks, you are bound to get litigation.

We were curious about the history of beauty pageant naming litigation, so we decided to gather together in one place the disputes that resulted in a written dispositive opinion (let us know if you think we missed any):

Miss Universe v. Patricelli (2d Cir. 1969). The Second Circuit defined the parameters of the beauty pageant trademark litigation genre by issuing a split decision in a dispute between the plaintiff, the MISS U.S.A. pageant, which was part of the MISS UNIVERSE network, and the defendant, a U.S. affiliate of the London-based MISS WORLD competition. The Second Circuit held that it was proper to preliminarily enjoin the defendant from using MISS U.S.A.-WORLD, but that it was improper to enjoin the defendant’s use of the alternative MISS WORLD-U.S.A; the Court found that the latter mark — but not the former — was dominated by the distinguishing major element: “WORLD.”

Miss America Pageant v. Miss America Brassiere Company (TTAB 1969). The MISS AMERICA pageant, which was founded in 1921, opposed a clothing company’s application to register MISS AMERICA for lingerie. However, whereas the pageant didn’t settle on its name until 1935 (it was previously the NATIONAL BEAUTY TOURNAMENT and the SHOWMEN’S VARIETY JUBILLEE OF ATLANTIC CITY), the clothing company had been marketing MISS AMERICA bras since 1926. The opposition was dismissed.

Palisades Pageants v. Miss America (C.C.P.A. 1971) The Court of Customs and Patent Appeals (before it was replaced by the Federal Circuit) affirmed the decision of the United States Trademark Office to refuse registration of LITTLE MISS AMERICA. The TTAB found that the Jersey Shore-based pageant for girls ages five to ten was likely to be confused with the MISS AMERICA pageant.

Hal Jackson Associates v. Wortham (TTAB 1973). The MISS BLACK TEEN competition began as a regional New England contest sponsored by the local chapter of the N.A.A.C.P. MISS BLACK TEENAGE AMERICA, although it started several months later, was a televised event based in Atlanta, with national aspirations. The TTAB held that the variant wordings of the two pageants’ names were “differences without a distinction” and denied registration of the Atlanta pageant’s mark.

Miss Universe v. Drost (TTAB 1975). The MISS U.S.A. pageant organizers opposed an application to register MISS NUDE U.S.A., with the word “Nude” disclaimed. The TTAB held that the contemporaneous use of the two marks for nearly identical services was likely to create confusion, and sustained the opposition.

Stein v. Drost (TTAB 1975). The same applicant whose MISS NUDE U.S.A. mark was refused registration also applied to register MISS NUDE WORLD. The application was opposed by the operator of a preexisting MISS NUDE WORLD pageant which, although based in Canada, was endorsed by several U.S. nudist groups, some which conducted regional contests to pick candidates to send to Canada for the main competition. The TTAB found that these activities constituted sufficient use of the mark in U.S. commerce, and sustained the opposition.

National Teen-Ager v. Hovland (N.D. Ill. 1975). The Northern District of Illinois allowed the MISS NATIONAL TEEN-AGER pageant’s motion to enjoin a former employee from using the NATIONWIDE TEENAGER mark.

Miss Universe v. Flesher (9th Cir. 1979). The Ninth Circuit held that the MISS NUDE U.S.A. pageant was likely to be confused with the MISS U.S.A. pageant and affirmed a preliminary injunction against the nude event’s continued use of the name.

Miss Universe v. Miss Teen U.S.A. and Miss Universe v. Little Miss U.S.A. (N.D. Ga. 1980). In a pair of similar cases, the Northern District of Georgia enjoined the defendants’ use of LITTLE MISS U.S.A. and MISS TEEN U.S.A., on the grounds that both were likely to be confused for affiliates of MISS U.S.A.

United States Olympic Committee v. International Federation of Bodybuilders (D. D.C. 1982). The Federal District Court for the District of Columbia ruled that, although the MR. OLYMPIA bodybuilding competition had improperly used the the Olympic Games rings and torch symbols, it was permitted to keep its name, especially in light of over a decade of use without any actual confusion.

Mecca Limited v. Patricelli (2d Cir. 1979). When the MISS WORLD-U.S.A pageant ended its affiliation with MISS WORLD, it changed its name to MISS VENUS WORLD U.S.A. The MISS WORLD organizers brought suit, and the pageant was ordered to drop the “WORLD.” It became the MISS VENUS-U.S.A. pageant.

National Physique v. Amateur Athletic Union (S.D.N.Y. 1982). The organizer of a MISTER AMERICA bodybuilding contest moved to preliminarily enjoin a competitor from using the mark. The injunction was refused in light of the plaintiff’s murky ownership claim and the fact that the defendant had been using the name for forty years.

Miss Universe v. Patricelli (2d Cir. 1985). MISS WORLD was satisfied that the organizer of MISS VENUS WORLD U.S.A. changed its name to MISS VENUS – U.S.A. However, the organizers of MISS U.S.A. were not so happy with the change, and brought a new lawsuit against the MISS VENUS- U.S.A. pageant. With reference to its 1969 Patricelli ruling, the Second Circuit found that the public was unlikely to be confused.

Miss World (UK) Limited v. Mrs. America Pageants (9th Cir. 1988). The Ninth Circuit affirmed the lower court’s refusal to grant an injunction against the defendant’s use of MRS. OF THE WORLD, finding that the plaintiff’s MISS WORLD mark was relatively weak and that there was insufficient evidence of confusion.

Miss Universe v. Pitts (W.D. La. 1989). On the motion of the organizers of the MISS UNIVERSE and MISS U.S.A. pageants, the Western District of Louisiana enjoined the defendants from developing a competing MRS. UNIVERSE and MRS. USA franchise.

American Dairy Queen Corp. v. New Line Productions (D. Minn. 1998). The DAIRY QUEEN ice cream company obtained an injunction against the use of the title DAIRY QUEENS for a planned mockumentary about beauty contests in rural Minnesota. The film was retitled Drop Dead Gorgeous.

Guillot v. Wagner (Ct. App. La. 1999). The Court of Appeal of Louisiana affirmed the refusal to enjoin the defendant’s use of MISS JEFFERSON PARISH PAGEANT because the plaintiffs, owners of the MISS JEFFERSON PARISH SCHOLARSHIP PAGEANT, failed to introduce evidence other than the similarity of the names.

Miss Asia Beauty Pageant v. A.L. Models (TTAB 2000). A former sponsor of the MISS ASIA BEAUTY PAGEANT decided to go it alone and registered the MISS ASIAN WORLD BEAUTY PAGEANT mark. The TTAB found that the former sponsor had procured its registration by fraud, and allowed a petition to cancel the registration.

Miss Universe v. Rainbow Productions(TTAB 2004). The MISS TEEN USA pageant opposed Rainbow Production’s application to register MISS T-GIRL USA for “gay beauty pageants.” The applicant failed to present evidence of the meaning of “T-GIRL” and, in the absence of such evidence, the TTAB held that the marks shared overall similar commercial impressions. The opposition was sustained.

Goldfaden v. Miss World (D. N.J. 2005). When Gerald Goldfaden registered the MISS WORLD WIDE WEB mark for conducting online beauty contests, he bought himself years of litigation in various fora with the MISS WORLD pageant. In this round, the District of New Jersey denied MISS WORLD’s motions for summary judgment against Goldfaden’s declaratory judgment complaint.

Miss Universe v. Community Marketing (TTAB 2007). The organizers of the MISS UNIVERSE pageant opposed registration of MR. GAY UNIVERSE. The TTAB sustained the opposition, citing the widespread notoriety of the MISS UNIVERSE mark and holding that the relevant public was likely to assume a common source.

Miss Universe v. Villegas (S.D.N.Y. 2009). The MISS USA pageant brought an action to put a stop to the MISS ASIA USA pageant. The Southern District of New York granted judgment for the defendants, finding that the overall commercial impressions were different.

Mrs. United States National Pageant v. Richardson (TTAB 2009). An application to register MRS. U.S. INTERNATIONAL for pageants was opposed by the owners of the MRS. UNITED STATES NATIONAL PAGEANT mark. The TTAB found that the marks were more similar than dissimilar and refused registration.

Mrs. United States National Pageant v. Miss United States of America Organization (W.D.N.Y. 2012). The owner of the MRS. UNITED STATES mark brought suit against the MISS UNITED STATES OF AMERICA pageant. The Western District of New York held that “OF AMERICA” did not sufficiently distinguish the marks and granted the plaintiff’s motion for a preliminary injunction.

Miss Lebanon v. Kayrouz (E.D. Mich. 2013). When the MISS LEBANON EMIGRANT contest of New Jersey brought suit against the organizer of the MISS LEBANON EMIGRANTS beauty pageant of Michigan, the defendant decided to discontinue using the name and a quick settlement in principle was reached by email. When the defendant changed her mind, the Eastern District of Michigan enforced the email settlement agreement.

In re Mason (TTAB 2013). An application to register MISS COSMOS was refused in light of a preexisting registration for the MISS CHINESE COSMOS PAGEANT. Because both marks contained the words “MISS” and “COSMOS” in the same order, the TTAB found that they were likely to be confused for one another and affirmed the refusal.

Harrison Productions v. Harris (TTAB 2015). The MISS AMERICAN BEAUTY pageant filed a petition to cancel the AMERICAN BEAUTY pageant mark on the grounds of fraud, claiming that the event purportedly promoted by the respondent never actually took place. The TTAB found that this was not sufficient proof of a knowingly false statement and dismissed the petition.

*Author

Kluft_DavidDavid Kluft  is a partner in Foley Hoag LLP’s Intellectual Property department and a member of the Trademark, Copyright and Unfair Competition group; the Business and Commercial Disputes group and the Advertising and Marketing group.

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