Thursday, June 13, 2013

TTAB Enters Summary Judgment: BABY GAGA Confusable With LADY GAGA for Clothing

Lady Gaga put a stop to Adam Swan's attempt to register the mark BABY GAGA for various clothing items, including t-shirts [BABY disclaimed]. The Board granted Opposer's motion for summary judgment, finding the applied-for mark likely to cause confusion with the common law mark LADY GAGA for a number of clothing items, including t-shirts. Ate My Heart Inc. v. Adam Swan, 111 USPQ2d 1564 (TTAB 2014) [not precedential].

The Board first considered the issue of standing, noting that Opposer had failed to properly make its registrations of record. Opposer submitted photocopies of the registrations (rather than certified status-and-title copies, or proper TESS documents), accompanied by a declaration stating only that Opposer owns the registrations: nothing about the status of the registrations. Consequently, Opposer had to rely on its common law rights in the LADY GAGA mark.

A declaration from Opposer's CEO established that Opposer has continuously used the LADY GAGA trademark for clothing since 2008, including at the on-line Lady Gaga official store, a date prior to Applicant Snow's filing date. Snow did not provide any evidence of use of his mark, nor did he contest standing.

Opposer claimed that the LADY GAGA mark is famous, submitting copies of magazine covers and media articles featuring Lady Gaga and pointing out that since 2008, Lady Gaga has sold more than 23 million albums and 64 million singles worldwide, that both Time Magazine and Forbes included Lady Gaga in its annual Time 100 list of most influential people, that Forbes placing her as number seven on their annual list of the World’s 100 Most Powerful Women, that Lady Gaga has received numerous awards and industry acknowledgements, and that she has been featured in several fashion magazines, including Vogue, Vanity Fair, and Elle. Applicant Swan "essentially conceded" that the mark LADY GAGA is famous by acknowledging Opposer’s contention that "so famous is she, when people say 'Gaga'  in 'press and in casual reference,' they mean her."

As to clothing, however, the evidence did not, as required, clearly establish fame, and so the Board could not conclude that there was no genuine dispute as to the fame of LADY GAGA with respect to clothing. However, because the Board did not, in its further analysis, treat the mark as famous, Opposer’s evidence on this factor did not raise a genuine dispute as to a material fact that would preclude the entry of summary judgment.

With regard to channels of trade, the opposed application did not include any limitation or restriction, and so the Board must presume that applicant’s goods will be travel in all normal channels (to all the usual classes of purchasers), which would include sales to the general public via the Internet.

Turning to the marks, because the goods are identical in part (t-shirts), the degree of similarity between the marks necessary to support a finding of likelihood of confusion is decreased. There was no dispute that the marks are similar. "GAGA combined with LADY or BABY does not have any particular meaning that is apparent to us, and applicant has not pointed to any particular meaning for its mark."

Applicant contended that "any determination that there is no genuine dispute that the marks are similar is based on speculation because applicant has not yet sold his 'Baby Gaga clothing.' The Board brushed that aside, since actual use of the marks at issue is not necessary in order to to determine whether there is a genuine dispute as to the similarity of the marks: the test is likelihood of confusion, not actual confusion.

Therefore, the Board found no genuine dispute over the similarity of the marks in terms of appearance, sound, and commercial impression.

Finally, the Board turned to Swan's affirmative defense of "unclean hands." He claimed that Lady Gaga committed copyright infringement by using in her name, a part of the title of a third party’s musical recording ("Radio Ga-Ga/I Go Crazy" as recorded by Queen). The Board, however, observed that the defense of unclean hands must be related to Opposer’s claim and it concluded that Swan's was not related (e.g., Swan did not allege that Opposer is not the owner of the mark LADY GAGA).

The Board therefore entered summary judgment on Opposer's Section 2(d) claim. It declined to reach Opposer false connection (2(a)) and dilution claims, giving Opposer thirty days to decide whether it wished to pursue those claims (after proper re-pleading).

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Text Copyright John L. Welch 2013.


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