No Trademark Issue With 'The Fitchuation' T-Shirt


     (CN) - Abercrombie & Fitch did commit trademark violations by poking fun at a reality star from "The Jersey Shore" with its T-shirt, "The Fitchuation," a federal magistrate ruled.
     Michael "The Situation" Sorrentino and his company had sued A&F in November 2012, claiming that the clothier abused his name, image and trademark in an ad campaign.
     Though A&F made headlines in 2011 by claiming that it tried to pay Sorrentino from wearing its designs, the retailer then created a line that exploited catchphrases he and the other "Jersey Shore" stars made famous.
     A&F's T-shirt "The Fitchuation" is a reference to the nickname Sorrentino gave to his abdominal muscles, and it also sold a "GTL" shirt, an abbreviation that the MTV cast members used to describe their most common activities: gym, tanning and laundry.
     U.S. Magistrate John O'Sullivan in Miami nevertheless granted the clothier summary judgment Friday.
     "A&F's apparel goods are dissimilar to the plaintiffs' entertainment services," O'Sullivan wrote. "The plaintiffs concede that they did not offer apparel under a 'Situation' mark until after A&F introduced 'The Fitchuation' T-shirt. There is no evidence that the public attributes the parties' respective goods and services to the same single source."
     In its December motion to dismiss, A&F said Sorrentino "failed to state a plausible legal and factual basis for each of their claims." The clothing company also said the parody T-shirts do not create confusion between it and the reality TV personality - a requirement for a trademark-infringement claim.
     O'Sullivan agreed.
     "The court finds that 'The Situation' is an 'arbitrary or fanciful' mark because it 'bears no relationship to the product or service," he wrote. "Although the word 'situation' is not a word that was coined or made up by the plaintiffs, or a word that is obsolete, totally unknown in the language or out of common usage, the court can discern no relationship between the word 'situation' and the apparel or entertainment services that the plaintiffs provide."
     A&F also persuade the court that Sorrentino's trademark rights in the mark or name "The Situation" were unenforceable because he and his company did not timely develop those trademark rights.
     "At the time A&F began selling its 'The Fitchuation' T-shirt in February 2010, plaintiffs had not used 'The Situation' on a T-shirt or any other apparel," O'Sullivan wrote. In fact, Sorrentino "did not develop any common law rights to 'The Situation' for apparel until June of 2010 at the earliest," according to the ruling.
     Sorrentino also "did not offer apparel until after A&F introduced its parody T-shirt, and even then only on their website, officialsituation.com," O'Sullivan added.
     There is additionally no evidence of actual confusion, according to the ruling.
     "The plaintiffs have failed to present a triable issue of fact as to whether the defendants' 'The Fitchuation' T-shirt was likely to confuse consumers into believing that the shirt came from the plaintiff rather than A&F," O'Sullivan wrote.
     A&F furthermore did not violate Sorrentino's rights with the press release that asked him to stop wearing its clothes, according to the ruling.
     "The court finds that the use of Michael Sorrentino's name and nickname in the press release was a non-actionable fair use under trademark law," O'Sullivan wrote. "A&F used only as much of the plaintiff's name as was reasonably necessary to respond to his wearing A&F's brand on 'The Jersey Shore' and did not do anything that would suggest Sorrentino's sponsorship or endorsement."