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.