“Out of the Closet” Trademark Settlement
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Written by Gene Quinn Patent Attorney & Founder of IPWatchdog Zies, Widerman & Malek Follow Gene on Twitter @IPWatchdog Posted: Nov 10, 2008 @ 9:26 pm 
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AIDS Healthcare Foundation (AHF) the largest AIDS organization in the US and operator of the popular and award winning fundraising “Out of the Closet” thrift store chain in California and Florida, has reached agreement to resolve the issue of trademark infringement with the operator of a private, for-profit Alaska consignment shop of the same name that was cited by Republican Vice Presidential candidate Governor Sarah Palin during the presidential campaign as her favorite store. The Alaska consignment store, and the trademark infringement issue, came to national attention following revelations that the Republican National Committee (RNC) spent money on a campaign wardrobe and other clothing for Governor Palin and her family. That news drew widespread and highly critical media coverage that prompted Palin during interviews to proclaim she is really thrifty and in fact prefers to shop at the “Out of the Closet” consignment store in Alaska.
The Alaska store had apparently been operating for five years under the same “Out of the Closet” name as AHF’s fundraising chain-which first opened in 1990-and under the same name for which AHF has had registered federal trademark since 1997. Upon learning of the trademark infringement, AHF announced its intention to pursue trademark protection by demanding that the proprietor of the Alaska store immediately change the name of her store and stop using AHF’s federally registered trademark for all business purposes.
On October 27, 2008, AHF General Counsel Tom Myers sent a formal cease and desist letter to the Alaska consignment shop regarding use of the trademarked “Out of the Closet” name by her for-profit resale clothing store in Anchorage. In a written reply dated October 31,2008, the owner of the Alaska consignment shop pledged to honor and fully comply with AHF’s federal trademark by changing the name of her own store; however, in her reply, she cited several practical and logistical reasons, such as replacing store signage, changing bank account names and bank card receipts, while asking for time to make the needed changes.
As a result, the owner of the consignment shop has asked to be given until December 31, 2008, to make the changes to the store’s name. AHF has agreed to give the time requested and is thankful that the Alaska store will honor its federal trademark rights without need for filing a lawsuit.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.
I am kind of surprised that this did not wind up as a licensing deal. It seems to me that the non-profit could benefit from the fame that Governer Palin brought to the mark.