Category Archives:Trademark Law

Rapper Rick Ross prevails over another rapper in trademark lawsuit

Recently, rapper Rick Ross prevailed in a trademark lawsuit filed against him by rapper Raul Caiz.[1] The Plaintiff, Raul Caiz’s (“Plaintiff”) Complaint asserted claims for Federal Trademark Infringement, Dilution, and Unfair Competition.[2] The Plaintiff asserted Rick Ross infringed upon his trademark in the term “Mastermind,” for which Plaintiff owned a federal registration.[3] Specifically, the Plaintiff alleged that Rick Ross infringed upon his rights by releasing an album entitled “Mastermind,” by tilting his tour “Mastermind,” and by creating a “Mastermind” persona.[4] In defense, Rick Ross filed a motion for summary judgment arguing that the Plaintiff’s trademark should be cancelled because it is a descriptive term and was abandoned by Plaintiff.[5]

The Court agreed with Rick Ross finding that the term “Mastermind” was utilized by several others in the rap music industry in connection with songs, album titles and lyrics.[6] The Court then went on to determine whether Plaintiff had acquired secondary meaning in the term “Mastermind.”[7] The Court described secondary meaning as occurring when “buyers and potential buyers automatically associate the mark with Plaintiff.”[8] The Court then found that the Plaintiff could not set forth enough evidence to support a finding of secondary meaning as the Plaintiff could not overcome the substantial evidence presented that the term “Mastermind” is widely used in the rap music industry.[9] Further, the Court entered summary judgment against the Plaintiff on his claims for trademark dilution since Plaintiff could not prove that his “Mastermind” mark was famous.[10] As a result, the Court ordered the cancellation of Plaintiff’s “Mastermind” mark.[11]

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, Caiz v. Roberts, et. al., No. 15-cv-09044-RSWL-ARGx, 2016 WL 7335573 (C.D. Cal. Dec. 15, 2016).
[2] Id. at *1.
[3] Id. at *1-2.
[4] Id. at *1.
[5] Id. at *1-3.
[6] Id. at *4.
[7] Id.
[8] Id.
[9] Id. at *5.
[10] Id. at *6-7.
[11] Id. at *6.

Trademark Trial and Appeal Board refuses trademark applications for Marijuana Vaporizers

Recently, the Trademark Trial and Appeal Board (“TTAB”) refused trademark applications for the terms “POWERED BY JUJU” and “JUJU JOINTS.”[1] The Applicant sought to register both marks for use in connection with vaporizing devices for cannabis or marijuana.[2] The TTAB found that these marks could not be registered because the use of a mark in commerce must be lawful.[3] Since the Applicant’s marks were intended to be used and were used on goods that are illegal under the federal Controlled Substances Act (“CSA”), the TTAB reasoned that the Applicant could not lawfully use its marks in commerce.[4] The CSA provides “equipment primarily intended or designed for use in ingesting, inhaling, or otherwise introducing cannabis or marijuana into the human body constitutes unlawful drug paraphernalia.”[5]

In response, the Applicant argued that it only does business in states where marijuana is legal and which comply with federal directives such as the Cole Memo.[6] However, the TTAB rejected Applicant’s arguments finding that “‘the fact that the provision of a product or service may be lawful within a state is irrelevant to the questions of federal registration when it is unlawful under federal law.’”[7] The Cole Memo referred to by Applicant is a U.S. Department of Justice memorandum which addressed the enactment of medical marijuana laws in certain states, affirmed the illegality of marijuana under the CSA and set forth federal enforcement policy guidance.[8] One such enforcement policy under the Cole Memo is “‘[p]reventing the diversion of marijuana from states where it is legal under state law in some form to other states.’”[9] The TTAB rejected Applicant’s reliance upon the Cole Memo noting that even if the states where Applicant does business comply with its guidance on enforcement, the Cole Memo does not override the CSA or support the notion that marijuana is legal.[10]

The TTAB also rejected Applicant’s attempt to argue that the marijuana industry is similar to the alcohol and tobacco industry and that its marks should be eligible for registration because there are acceptable medicinal uses for marijuana.[11] The TTAB noted that alcohol and tobacco do not violate the CSA and thus any comparison to those industries is irrelevant.[12] The TTAB’s ruling appears to put to rest any uncertainty as to whether state marijuana laws provide support for a federal trademark registration based upon marijuana related goods and/or services.

Please contact our office if you have any questions regarding the information in this article.

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

[1] See, In re JJ206, LLC, dba Juju Joints, Serial Nos. 86474701 & 86236122 (TTAB Oct. 27, 2016), available at http://ttabvue.uspto.gov/ttabvue/v?pno=86236122&pty=EXA&eno=14
[2] Id.
[3] Id.
[4] Id.
[5] Id. (internal citations omitted)
[6] Id.
[7] Id. (internal citations omitted)
[8] Id.
[9] Id. (internal citations omitted)
[10] Id.
[11] Id.
[12] Id.

Former NFL player’s trademark ruled not famous in lawsuit concerning “The Biggest Loser” show

Recently, former NFL player, LeCharles Bentley’s claim for trademark dilution was dismissed in a lawsuit that he brought against NBC, among other defendants.[1] This dispute revolves around Plaintiffs’ allegations that the Defendants are infringing upon the trademark LB by using a similar logo in connection with the reality television show, “The Biggest Loser.”[2] This case was originally filed in Ohio but then was transferred to the Central District Court of California.[3] The defendants then moved to dismiss Plaintiffs’ causes of action for trademark dilution and infringement.[4]

In order to support a claim for trademark dilution, Plaintiffs would need to allege that the marks are distinctive and famous.[5] The Court noted that the Plaintiffs alleged two different versions of the LB mark in their Complaint, namely a black and white version and a red version, and applied a presumption that such marks were distinctive.[6] The Court then found that, despite the presumption of distinctiveness, the LB marks were descriptive because they were comprised of Plaintiff, LeCharles Bentley’s initials.[7] This finding of descriptiveness put the burden on the Plaintiffs to show that the marks obtained enough consumer recognition to satisfy the requirement of secondary meaning.[8] The Plaintiffs alleged that their LB marks are well known in the sports performance industry as a result of Plaintiffs’ use of the mark in commerce for several years, which the Court found to be sufficient to establish that the marks were distinctive.[9] However, distinctiveness of a mark alone is not sufficient to support a trademark dilution claim as more is required to show that the mark is famous.[10]

Since trademark dilution claims are meant only for a select class of marks that are considered famous, the test to determine fame is difficult to meet.[11] The Court delineated a four factor test to determine fame, namely 1) the duration, extent and geographic reach of advertising of the mark; 2) the amount, volume and geographic extent of sales of goods and/or services offered under the mark; 3) the extent of actual recognition of the mark; and 4) whether the mark is registered.[12] Marks that are considered famous are usually those that are widely recognized by the general public, and whose fame is recognized in more than just niche markets.[13] The Court provided examples of marks that could be considered famous, namely BUDWEISER, CAMEL, and BARBIE.[14] In this case, it was determined that the Plaintiffs’ marks were not sufficiently famous, as the Plaintiffs could only show that their marks were recognized among a limited segment of individuals, namely those interested in “football, sports performance, and fitness training.”[15]

The results of this case show that not every trademark can be considered famous, even if federally registered. It is common practice for parties involved in litigation matters to allege that their trademarks are famous. However, the amount of trademarks that will end up being considered famous is limited. Please contact our office if you have any questions regarding the information in this article.

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

[1] See, LeCharles Bentley, et. al. v. NBC Universal, LLC, et. al., No. 16-cv-03693 TJH (KSx) at Docket Entry No. 63 (C.D. Cal. Sept. 28, 2016).
[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.