Fight over Bo Jo Bo Wishing Dolls goes to federal court

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Posted on Dec 04 2005

A fight between two handicraft companies over the production of “Bo Jo Bo Wishing Dolls” and its legend has ended in a legal battle in federal court.

Saipan Handicraft sued Micronesia Woodcraft Ent. Inc., its president Tirzo J. Adriatico, and 40 unnamed co-defendants, for among other things, use of false designation in interstate commerce, trademark infringement, unfair competition, and violation of Consumer Protection Act.

Saipan Handicraft, through counsel F. Matthew Smith, asked the U.S. District Court for the NMI to enjoin the defendants from directly or indirectly using the name Bo Jo Bo Wishing Dolls which is likely to cause confusion or mistake or deceiving customers.

The plaintiff demanded the removal of the dolls from any stores that violate the Consumer Protection Act. The company also demanded for damages.

Smith stated in the complaint that Saipan Handicraft was organized by Rodrigo Capati and began doing business in 1984 under the name Saipan Woodcraft Ent.

Smith said that before that time, from 1980 to 1983, Capati was also making and selling wishing dolls but not under the Saipan Handicraft name or license.

Since 1984, Saipan Handicraft was created and sold a variety of wood and handicraft products, including handcrafted traditional-style dolls made out of bayogo.

Bayogo is the name of the seed from a local plant vine.

Smith said that in Dec. 2003, Saipan Handicraft changed its name from Saipan Woodcraft Ent. to Saipan Handicraft after Adriatico, a former employee, opened a competing business named Micronesia Woodcraft Ent. Inc. and copied all of Saipan Handicraft’s wood carving designs.

The confusion caused by Adriatico’s intentionally confusing name and unfair business actions, and a decision by Saipan Handicraft to focus exclusively on the production of its Bo Jo Bo Wishing Dolls, were the primary reasons for the change of name by Saipan Handicraft, the lawyer said.

From the very beginning, Saipan Handicraft (and Capati from 1980 to 1983) has identified and continues to identify its handcrafted traditional-style doll products with and by the name and trademark “Bo Jo Bo Wishing Dolls” alone or with other words or symbols including the “Legend of the Bo Jo Bo Wishing Dolls.”

Saipan Handicraft, Smith said, has widely sold in interstate commerce, including Guam and Japan, its Wishing Dolls with high quality, beauty, and luck.

Smith stated that the first dolls using the “Bo Jo Bo Wishing Dolls” name and design were made in the early ‘60s.

The name, legend, and idea for these dolls was the brainchild of Dr. William Vitarelli, who was employed by the Education Department of the Trust Territory of the Pacific Islands and was on Saipan helping to create a local handicraft item that the Marianas District could sell and display at an upcoming arts festival, he said.

Vitarelli created the name “Bo Jo Bo Wishing Dolls” as well as the associated legend to accompany the dolls, he said.

The legend was based in San Roque, Saipan because that is the village in which the families of Enrique Kisa and Gus Camacho, Vitarelli’s partners, resided.

Vitarelli eventually moved from the Marianas District and left the name, legend, and idea with Kisa and Camacho.

Kisa turned over the doll business to his son Manuel Kisa. When Manuel Kisa stopped producing the dolls, Camacho began producing and selling them using the Bo Jo Bo Wishing Dolls name and legend, Smith said.

Capati was an employee of Camacho and was responsible for assembling and making the dolls.

In 1979, Camacho stopped producing the dolls to pursue a building construction business.

In 1980, Capati began making the dolls and using the “Bo Jo Bo Wishing Dolls name and legend.

From 1984 forward, Saipan Handicraft produced, marketed, and sold the dolls and used Bo Jo Bo Wishing Dolls” name and legend.

Beginning in 1984, Saipan Handicraft, through Capati, entered into an oral agreement with DFS Shoppers at the various hotels, and in the airport and agreed to sell and provide wishing dolls to DFS stores each month.

This contract and arrangement with DFS continued from 1984 through June 2005.

Smith said that on Oct. 13, 2005, Saipan Handicraft formally applied for a registered trademark Bo Jo Bo Wishing Dolls and its dress with the U.S Patent and Trademark Office.

Smith said that Micronesia Woodcraft, Adriatico and other defendants began making, marketing and selling Bo Jo Bo dolls that copy and use without permission the trademarks and trade dress of Saipan Handicraft.

In fact, he added, the dolls offered by Micronesia Woodcraft and Adriatico to the public, use a card label so closely resembling the label used by Saipan Handicraft as to be nearly identical.

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