Category Archives:Trademark Law

Wu-Tang Clan opposes trademark application for “Woof-Tang Clan”

Recently, Robert Diggs, p/k/a RZA, opposed a trademark application for the mark WOOF-TANG CLAN.[1] RZA is one of the leaders of the hip-hop group WU-TANG CLAN and alleges to be the owner of multiple trademark registrations containing the mark WU-TANG CLAN.[2] The applicant Woof-Tang Clan, LLC (“Applicant”) is a New York business entity which filed a trademark application for the mark WOOF-TANG CLAN for dog walking services and pet sitting.[3] Applicant’s website touts itself as “the illest group of dogs in New York City.”[4]

In his Notice of Opposition, RZA makes several arguments why the WOOF-TANG CLAN application should not be allowed registration.[5] First, RZA alleges that the WOOF-TANG CLAN mark falsely suggests a connection with RZA, who is known to be associated with the WU-TANG CLAN.[6] RZA further alleges that the WU-TANG CLAN trademarks have been used prior to Applicant’s mark and that Applicant’s mark would cause consumers to be confused as to whether Applicant is affiliated with RZA or the WU-TANG CLAN.[7] RZA’s last argument is that the WU-TANG CLAN trademarks are famous, and thus, Applicant’s mark is likely to dilute the distinctive value of the WU-TANG CLAN trademarks.[8]

The deadline for the Applicant to respond to RZA’s claims is currently set on Christmas day.[9] One of the issues yet to be determined is whether the Applicant knew of the WU-TANG trademarks prior to filing an application, and thus intentionally attempted to siphon off of the goodwill of WU-TANG.[10] This coincides with RZA’s argument that the WU-TANG CLAN marks are famous.[11] However, the burden will still be on RZA to establish the fame of the WU-TANG CLAN marks. If RZA’s arguments are successful it is likely that Applicant’s application will be denied registration.

We will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Robert Diggs v. Woof-Tang Clan, LLC, Opposition No. 91237820 (TTAB Nov. 15, 2017).
[2] Id.
[3] Id.
[4] See, http://www.wooftangclan.com/services.html
[5] See, Robert Diggs v. Woof-Tang Clan, LLC, Opposition No. 91237820 (TTAB Nov. 15, 2017).
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.

KERRYGOLD initiates trademark lawsuit against competing butter brand

Recently, the companies responsible for manufacturing and distributing butter under the trademark KERRYGOLD (“Plaintiffs”) filed a trademark infringement lawsuit against Eurogold USA, LLC and Old World Creamery, LLC (“Defendants”).[1] The dispute revolves around Plaintiffs’ allegations that the Defendants plan to sell Irish butter products under the mark IRISHGOLD.[2] According to  Plaintiffs, the parties were in negotiations for the Defendants to package Plaintiffs’ Irish butter products under the KERRYGOLD mark in Wisconsin, but negotiations broke off and Defendants decided to sell their own products under the IRISHGOLD mark.[3] Although Plaintiffs’ KERRYGOLD products are sold throughout the United States, such products have not been widely available in the state of Wisconsin due to the state’s specific requirement that any butter sold in the state bear a Wisconsin or federal grade mark.[4] The problem for Plaintiffs is that its KERRYGOLD products are inspected and graded in Ireland.[5] As a result, Plaintiffs had sought to enlist Defendants’ help in selling its KERRYGOLD products in Wisconsin.[6]

According to Plaintiffs, the Defendants’ IRISHGOLD mark would be presented to the marketplace with a similar font and color scheme found in Plaintiffs’ KERRYGOLD branded butter and would also be sold in packages containing two 4 oz. sticks, which is the same way that Plaintiffs sell their KERRYGOLD butter products.[7] Plaintiffs have alleged that they own several federal trademark registrations for the mark KERRYGOLD, using different fonts, logos and variations.[8] Plaintiffs have also alleged that Defendants’ proposed use of the IRISHGOLD mark would cause consumers to mistakenly believe that this product was authorized by Plaintiffs.[9] Plaintiffs pointed to a specific instance where on April 7, 2017, the Chicago Tribune allegedly published a news story discussing the imminent sale of butter under the IRISHGOLD mark but used a photograph of Plaintiffs’ KERRYGOLD butter.[10]

As a result, simultaneously with the filing of the Complaint, Plaintiffs filed motions for a temporary restraining order and for a preliminary injunction.[11] On or about April 13, 2017, the Eastern District of Wisconsin granted the Plaintiffs’ Motion for Temporary Restraining Order which temporarily prevents the Defendants from using their IRISHGOLD mark.[12] This Order is only temporary in nature, and thus, the Court ordered that an additional court hearing will be held on Plaintiffs’ Motion for Preliminary Injunction.[13] One of the issues yet to be determined is whether Plaintiffs’ KERRYGOLD mark is considered a famous mark, and thus, can support a claim for trademark dilution.

We will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Ornua Foods North America, Inc., et. al. v. Eurogold USA, LLC, et. al., Case No. 17-cv-00510-JPS, at Docket Entry No. 4 (E.D. Wis. April 10, 2017).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.
[12] See, Ornua Foods North America, Inc., et. al. v. Eurogold USA, LLC, et. al., Case No. 17-cv-00510-JPS, at Docket Entry No. 24 (E.D. Wis. April 10, 2017).
[13] Id.

Viacom prevails in SpongeBob SquarePants Trademark Lawsuit

Recently, Viacom, the company responsible for the Sponge SquarePants television show, prevailed in a trademark lawsuit.[1] The dispute resulted from the Defendant’s plans to use the name “Krusty Krab” for a restaurant.[2] The Plaintiff objected and then filed a lawsuit against the Defendant for trademark infringement and other claims under the Federal Lanham Act and common law.[3] The Plaintiff argued that the Defendant’s proposed use of “Krusty Krab” infringed upon its rights since Plaintiff has been using “The Krusty Krab” as the name of a fictional restaurant in the SpongeBob SquarePants television show since 1999.[4] The Plaintiff moved for summary judgment.[5]

The Plaintiff did not have a trademark registration for the term “The Krusty Krab” and relied upon its common law use of the mark.[6] Specifically, the Plaintiff argued that the “The Krusty Krab” mark appeared in 166 of the 203 SpongeBob SquarePants episodes that were aired, and was also depicted in two SpongeBob SquarePants feature films.[7] The Plaintiff also pointed to the fact that it has been selling products and licensing the right to sell products utilizing the term “The Krusty Krab.”[8]

The Defendant argued that the Plaintiff could not obtain trademark rights in the title of a fictional restaurant.[9] The Court disagreed finding that elements of a television show can be protected as a trademark, such as “symbols, design elements, and characters which the public directly associates with the plaintiff or its product.”[10] In support of its reasoning the Court pointed to previous court rulings that the term “Kryptonite,” from the Superman comics, books and movies, can be protected as a trademark, even though it is a “fictional radioactive compound in the Superman series.”[11]

Finding that the Plaintiff had a valid trademark in the term “The Krusty Krab,” the Court moved on to determining whether Defendant’s use of the term created a likelihood of consumer confusion.[12] The Court found that likelihood of confusion existed because consumers would be likely to mistakenly believe that the Defendant’s restaurant is an officially licensed or endorsed restaurant of Plaintiff, which was partially based upon a consumer survey entered into evidence by Plaintiff.[13] As a result, the Plaintiff was granted summary judgment on its claim for trademark infringement.[14] The Court denied Plaintiff’s motion for summary judgment as to its claim for dilution as well as Plaintiff’s other claims for false designation of origin, unfair competition and refusal of registration.[15]

Unless the Defendant decides to appeal the Court’s decision, the Defendant will be prevented from using “The Krusty Krab” as the name of its restaurant. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Viacom Int’l, Inc. v. IJR Capital Investments, LLC, Case No. 16-cv-00257 at Docket Entry No. 32 (S.D. Tex. January 11, 2017).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.
[12] Id.
[13] Id.
[14] Id.
[15] Id.