Should anyone have exclusive rights to the word “Boobie” for goods designed to help breastfeeding?
This give a little page is for my friend who had started a breastfeeding business in the hopes to help and support other women who may be struggling with breastfeeding like she did.
I want you to ask yourself a question now. Should anyone have exclusive rights to the word “Boobie” for goods designed to help breastfeeding?
For the full story read below. The quick summary, my friend who started her business under the name My Boobie Bag went into a working relationship with The Lactation Station (TLS) and started stocking their cookies for her breastfeeding starter kits. However, at the same time The Lactation Station filed trademark applications for Boobie Bag and Boobie (amongst various others) and then served cease-and-desist letters to My Boobie Bag, ultimately stopping My Boobie Bag from trading.
This has taken an immense mental and financial toll on my friend and I hope by sharing her story we can help support her and bring awareness to help others who may be affected.
FULL STORY by the founder of My Boobie Bag
This story has garnered significant public attention over the past few weeks, but up until now I have been unable to release the name of the party involved, and the complete story, but I know that sharing my devastating experience will help others. This could happen to any other small business.
I have tried to come to a settlement agreement with TLS for them to cover some of the legal costs incurred because of this situation and for my rebrand. However, they have declined and they will not pay us anything.
So, all I can do now is share my story in the hopes to raise some funds to be able to pay off the debts and hopefully start again. Please note this story has been given the green light by my lawyer so everything in here is truthful and backed with evidence.
By way of background, I started my business called MY BOOBIE BAG in 2020, and began trading in April 2021. Due to the difficulties, I had breastfeeding my children, my aim was to help other Mums in the same boat by selling goods which can improve the breastfeeding experience. These goods were both my own products as well as sourced from a variety of different traders – and just consolidated by me into bags sold under the mark MY BOOBIE BAG.
On 14 September 2021, I sent a wholesale application to The Lactation Station (“TLS”) as I wanted to stock their cookies in my bags for breast feeding mothers. The owner of TLS and I exchanged numerous emails back and forth prior to us placing our order (discussing what products were most popular and best suited for My Boobie Bag). TLS then fulfilled the order towards the end of the month, and sent me the goods. I was really excited to have these goods in my bags and had professional photographs taken for my website and social media pages where I actively promoted them.
But on 18 October, the director of TLS sent an email to me saying that she had released her own BOOBIE BAG in June 2021 and that she had been advised to trade mark all their products. Something we were never told prior to this email. She also said that she wasn’t worried about the similarities between the marks, as my business was not in competition to hers and acknowledge we were in fact supporting her. Her own application to register BOOBIE BAG was lodged on 13 October – before she sent me the email (but after I placed the order with her).
I sought confirmation from TLS that we could co-exist, as we are non-competitive. However, despite her earlier email, she refused, and all further correspondence has come through her lawyer. In November 2021 we were then served a cease-and-desist letter by her lawyer. Not surprisingly, the fear of being hauled before the courts and being sued for damages immediately adversely affected my mental health. I consequently advised TLS’s lawyer that I would change my trade mark.
I am also aware that TLS forced another small business owner to stop using the mark “Boobie Bar Slice” earlier this year.
TLS has applied to register the word BOOBIE in relation to a wide variety of goods including dietary and nutritional supplements, cookies, smoothies and the wholesale and retail of such goods. Unfortunately, I am not in a financial position to oppose such application proceeding to registration. A trade mark registration gives the owner the exclusive rights to use the mark for the goods covered by the registration. Accordingly, anyone using the identical mark on the goods covered by the registration will be constituting infringement.
I have had to incur thousands of dollars in legal fees already, but it looks like I will be spending thousands more to rebrand, rather than fight this.
Thank you so much for reading my story. Please feel free to share this with anyone who may also be impacted – it has been a real eye opener for so many small businesses who have now taken the first steps to trademark. I am not sure what the future holds for us, but I assure you, your support does not go unnoticed. As difficult as the last few months have been for me, seeing your kind words and messages truly brightens up my days.
Thank you again and follow us along over on Instagram @myboobiebag,
Founder of My Boobie Bag
Legal expenses as a result of a trademark expense