Court Upholds Settlement Agreements in Great Clips Trademark Case
Robins, Kaplan, Miller & Ciresi L.L.P. Defends Great Clips' Right to Use Trademark
Feb 19, 2009
Minneapolis (February 19, 2009) - The U.S. District Court for the District of Massachusetts has upheld a settlement agreement giving the hair salon chain Great Clips, Inc. the right to use the trademark "Great Clips" in the Boston market. Judge Douglas P. Woodlock granted Great Clips' motion for declaratory judgment in the case, Great Clips, Inc. v. Hair Cuttery of Greater Boston LLC and Great Cuts, Inc., and also dismissed a counterclaim of trademark infringement against the company.
"We are pleased the District Court upheld the original settlement agreement signed in 1989," said Jan Conlin, trial counsel to Great Clips and Chair of the Business Litigation Group at Robins, Kaplan, Miller & Ciresi L.L.P. "Defendants were trying to go back on a valid, properly negotiated agreement that has governed the conduct of the parties for the last 20 years. Great Clips may continue to use its longstanding trademark as part of its strategic business plans and expansion."
In December 1989, Great Clips entered into a settlement agreement with Dalan Corporation to resolve a trademark dispute before the United States Patent and Trademark Office (PTO). Under the agreement, Great Clips agreed to withdraw an opposition with the PTO objecting to an application by Dalan to register the mark "Great Cuts." Dalan, for its part, agreed to withdraw its counterclaim for the cancellation of the "Great Clips" mark. The agreement also bound successors and affiliates of the two companies. Dalan subsequently merged with salon operator Great Cuts, Inc., which, under the agreement, then had a right to use the trademark "Great Cuts."
In 2008, Great Clips secured franchise agreements to open up several salons in Massachusetts and New Hampshire. The Hair Cuttery, which had licensed the trademark "Great Cuts" from Great Cuts, threatened legal action against Great Clips over its planned use of the "Great Clips" mark in the New England market. Great Clips filed for declaratory judgment, arguing its use of "Great Clips" in New England was allowed under the terms of the settlement agreement with Dalan. Great Cuts and Hair Cuttery countersued for trademark infringement and several related causes of action.
"Our trademarks are very important to us. We will go to great lengths to protect our trademarks and our brand on behalf of the Great Clips system and our franchisees. We are grateful to Jan Conlin and her team for their assistance in helping us protect these rights," said Ray Barton, CEO and Chairman of Great Clips.
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