Porn site squeezed by juice maker

Summary:Legal battle erupts after National Fruit Product Co. demands Whitehouse.com turn over its domain name.

A Web porn operator and a fruit juice maker are locked in an escalating dispute over the right to use the term "whitehouse."

Earlier this month, National Fruit Product Co. demanded that Whitehouse.com transfer its Internet domain name to the Winchester, Va.-based company.

National Fruit has been using the White House label as far back as 1913, and maintains it holds "exclusive rights" to the trademark. Whitehouse.com, which has operated as an adult entertainment site for the last couple of years, has been running neck and neck with the Whitehouse.gov site in terms of page views and unique visitors, according to Media Metrix.

But in a letter to Whitehouse.com, National Fruit's lawyers say the use of the domain name to post pornography "dilutes and tarnishes the distinctive quality of our client's famous mark."

National Fruit's Vice President of Marketing Dan Troup said in a subsequent interview that some customers surfing the Web for information about his company had complained to National Fruit after stumbling across Whitehouse.com.

"We make food products that are wholesome, family products," he said. "We don't want any association with pornography if someone does a search for our Web site and they run across Whitehouse.com."

Troup declined to comment in detail on the dispute with Whitehouse.com, saying National Fruit was still weighing its next step. But Whitehouse.com's founder Dan Parisi was not waiting for anyone to help make up his mind and has filed a lawsuit asking the courts for a declaratory judgement dismissing National Fruit's infringement claims.

"What they're saying is you can't use the term 'whitehouse' for commercial use," Parisi said. "It's an outlandish claim."

Records show that National Fruit indeed has two approved registrations from the U.S. Patent & Trademark Office to use the mark "White House" - the earliest one dating back to 1918 for selling apple cider. But the government also approved 31 other applications from companies requesting permission to use "White House" for commercial purposes.

Patent Office refused Whitehouse.com's spring 1998 request to register the mark, four months after notifying Parisi that his application appeared to be entitled to registration.

Parisi cries foul
"They're basically selectively enforcing against us, saying that we can't get the mark," Parisi said. "This is very strange behavior because this very rarely happens. Only in extraordinary situations do these get turned down."

Still, legal experts believe Whitehouse.com would not be at a major disadvantage if the case went to trial. At worst, the fact that Whitehouse.com does not hold an approved trademark might cause it to lose certain presumptions in court.

More important, they say, the question of which side first owned the trademark will likely get superseded by a knottier argument about whether National Fruit's brand was indeed tarnished by an adult entertainment site.

"Under federal law, [National Fruit] will have to prove theirs is a famous mark. If you're Coca Cola, it's a no-brainer. If its National Fruit, they may have to jump through some hoops," said Kirk Dublin, an intellectual property specialist with Preston Gates & Ellis.

A spokesman for the U.S. Patent Office did not immediately return phone calls seeking comment.

Topics: Government, Legal, Patents

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