Seattle Trademark Lawyer

Haute Diggity! On Nov. 13, the Fourth Circuit found doggie-toy maker Haute Diggity Dog, LLC did not dilute Louis Vuitton Malletier, S.A.’s famous LOUIS VUITTON trademark by selling chew toys called “Chewey Vuiton.” Rebecca Tushnet’s discussion here. This is an important decision under the now year-old Trademark Dilution Revision Act. It’s also a loss for the owners of famous trademarks. The International Trademark Association had filed an amicus brief in support of Louis Vuitton. The Fourth Circuit apparently was not persuaded.

Starbucks threatens Michigan’s Conga Coffee & Tea over the latter’s green concentric circle logo. Vegas Trademark Attorney reports on the dispute and chides STL for not beating him to the story.

Likelihood of confusion?

Imposters no more. In June, STL wrote about California’s proposed Truth in Music Advertising Act aimed at “imposter” bands. It’s now law. Starting Jan. 1, 2008, the Act generally will make it unlawful for “any person to advertise or conduct a live musical performance or production through the use of a false, deceptive, or misleading affiliation, connection, or association between a performing group and a recording group….” If your band’s called Sha Na Na, in California your name had better be Bowzer Bouman.

STL recently reported on a local band name case: the Wailers of Tacoma versus the Wailers of Jamaica. Yesterday, Tacoma’s News Tribune published a column on the controversy.

A copy of plaintiffs’ complaint is here.  Defendants have not yet answered.

The case cite is Ormsby v. Barrett, No. 07-5305 (W.D. Wash.).

We have a juicy-sounding band name dispute right here in Seattle: members of the historic Washington band called “The Wailers” brought suit in the Western District June 20 against Bob Marley’s historic band of the same name. The complaint states that plaintiffs John M. “Buck” Ormsby and Kent E. Morrill have been performing as “The Wailers” (Washington) since 1959. Plaintiffs allege they obtained federal registrations for the WAILERS service mark in January 2003, which they say Aston “Family Man” Barrett and the other members of “The Wailers” (Jamaica) have infringed and diluted.

According to the complaint: “The Wailers have influenced the musical careers of bands such as The Beatles, Jimi Hendrix, The Sonics, the Rolling Stones, and Paul Revere and The Raiders. Most notably, The Wailers’ performance of the song ‘Louie Louie’ inspired The Kingsmen of Portland Oregon to record the same song.”

The Wailers (Washington) in 1960s
Photo credit: Pacific Northwest Bands

The complaint states defendants’ original group was formed in Jamaica in 1963 by Bob Marley, Peter Tosh, and Bunny Wailer. It alleges: “On or about 1974, the original group broke up, and Defendant Barrett and Bob Marley formed the musical group Bob Marley and the Wailers. Following the death of Bob Marley in 1981, The Wailers, including defendant Barrett, continued to stage live musical performances as a group, initially as The Bob Marley Wailers, and eventually simply The Wailers. This musical group has continued to stage live musical performances as The Wailers to the present day.”

The Wailers (Jamaica)

“The Wailers” (Washington) claim “The Wailers” (Jamaica)’s use of the same mark is likely to cause confusion and to dilute plaintiffs’ famous mark. “The Wailers” (Washington) also claim “The Wailers” (Jamaica) have wrongfully obtained the registration for wailers.com and have used the domain name to market, promote, and sell the entertainment services of “The Wailers” (Jamaica), causing confusion in the industry and among the general public.

“The Wailers” (Jamaica) have not yet answered the complaint.

The case cite is Ormsby v. Barrett, No. 07-5305 (W.D. Wash.)

Part 2 of the article, “How the Band Protects Its Brand: The Use of Trademarks to Protect and Promote the Musical Artist,” was published today in IPToday. For those who missed it, Part 1 is available here. Here’s an excerpt from the second installment:

“Like any other trademark, when selecting an artist’s professional name it is important to adopt a name that is both distinctive and unique. The more distinctive the name, the more effective the protection the name has as a trademark. Moreover, an artist should not only chose a distinctive name to protect its own identity, but the artist needs to avoid infringing upon other parties’ names. Because the likelihood of confusion between the two marks is the hallmark for trademark violations, a new artist should not choose a professional name that is identical or confusingly similar to an existing name in the music industry….”

“There have been numerous instances where an up and coming artist had to change its name due to trademark problems. For example, DINOSAUR JR. (formerly DINOSAUR), THE HOPEFULS (formerly THE OLYMPIC HOPEFULS), GREEN JELLY (formerly GREEN JELLÖ), AL FATZ (formerly FAT AL), DEATH FROM ABOVE 1979 (formerly DEATH FROM ABOVE), and THE VERVE (formerly VERVE) all had to change their professional names due to various trademark issues, the latter two involving similar record label names rather than other artist names. Moreover, commercial success does not guarantee litigation success: relative unknowns have forced successful artists to change their professional names. A recent example involved CBS’ rock band reality show Rock Star: Supernova, wherein the band, comprising famous musicians and the show’s winner, would be called SUPERNOVA. A lawsuit filed by a lesser known band called SUPERNOVA forced the reality band to change its name (not too creatively to ROCK STAR SUPERNOVA). Even the U.S. Postal Service was not pleased to see that there was an artist called “The Postal Service,” but an amicable resolution allowed the artist to retain its name.”

STL readers know of my interest in this issue. As I’ve said before, this is a series I wish I had written. Kudos to author Christopher R. Chase. I’m tempted to yell “Rock on!” but will just leave it with a dignified “Kudos.”

Last week, STL blogged about upstart bands who were forced to change their name after they started getting popular. Unfortunately, that’s the point when some other band comes out of the woodwork and claims to have adopted the same name years earlier. Even Nirvana wasn’t immune to this problem.

It’s understandable that a brand new band playing at the corner bar doesn’t think about trademark law when choosing its name. But has any band learned from the painful lessons in trademark law that Nirvana, Dinosaur Jr, Blink 182, and countless others suffered through after they began to achieve commercial success?

The answer is not many. This weekend I searched the PTO database for band names appearing in the College Music Journal’s (CMJ) Top 20 chart for radio play. This list contains the most popular indie bands, some of which are about to make it big-time. Of these 20, only one band has applied for (and in fact obtained) federal trademark registration — the band with the No. 1 record on CMJ’s Top 20: The Shins. Frontman James Mercer owns the registration. (Where that leaves other Shins members Martin Crandall, Dave Hernandez, Jesse Sandoval, and Eric Johnson is probably better left for another post.) No one else has even applied for federal registration, even though the other 19 charted groups undoubtedly perform and sell CDs and t-shirts in many parts of the country. Not even No. 17 The Broken West, which recently changed their name from The Brokedown after receiving a cease-and-desist letter from another band called The Brokedowns.

The Shins: Learning From Others’ Mistakes

Interestingly, this research uncovered a possible future band name dispute — or at least a close call. This week’s No. 8 artist is The Clinic, a Liverpool, UK-based band that released its fifth album last October (and that notably performs wearing surgical masks). Effingham, Illinois, physician Peter Bonutti owns a federal registration for THE CLINIC in connection with his band of the same name. Apparently, The Clinic (US) is Dr. Bonutti’s hobby band, since he likely spends most of his time working as an orthopedic surgeon, heading up his 170-employee clinic, and creating his 159 patented inventions (with 60 more patents pending). Dr. Bonutti’s federal registration (Reg. No. 2489257) claims he first used THE CLINIC in connection with “phonograph records and pre-recorded magnetic tapes, cartridges, compact discs, and cassettes” in July 1999. Luckily for the UK-based band, they formed in 1997 and released their first album in 1998. Assuming they made sales in United States commerce before July 1999, The Clinic (UK) at least would have common law rights to their name here. They may have dodged a bullet.

However, luck really shouldn’t have to matter. As the Canadian Trademark Blog recently wrote:

“Before committing to any new brand, appropriate clearance searches should be conducted. The best new brand in the world may not be of much use if it’s infringing on the rights of a competitor — at the very least, the cost of launching the brand could go up significantly — Apple’s launch of its iPhone brand is a classic example. Apple is fortunate enough to have the legal budget to fight those battles.  Many businesses don’t.”

Nor do many musicians. To continue the theme from last week, a little trademark due diligence goes a long way — whether you’re an upstart band or an upstart brand.