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.