Tuesday, January 04, 2011

P. Diddy Wins TTAB Summary Judgment Over "IDIDDY" For Headphones Due to Non-Use

Record producer, rapper, actor, and fashion designer Sean Puffy Combs a/k/a P. Diddy shellacked Applicant Pacific Rim in an opposition to registration of the mark IDIDDY for "headphones and cases specifically adopted for MP3 players, cell phones and video disc players." Combs alleged Section 2(d) likelihood of confusion with his registered P. DIDDY mark, false suggestion of a connection under Section 2(a), and mere descriptiveness under Section 2(e)(1). But discovery revealed that Pacific Rim had not used the mark prior to the filing of its use-based application to register. Sean Puffy Combs v. Pacific Rim Marketing Inc., Opposition No. 91187342 (December 16, 2010) [not precedential].

When Pacific Rim admitted on discovery that it had not shipped or sold any product prior to its filing date, Combs was granted leave to amend his opposition to add a claim that the opposed application is void ab initio due to lack of use in commerce. Combs then moved for summary judgment on the ground of non-use.

Pacific Rim admitted that it made a "mistake" in claiming use of its mark as of the filing date, but asserted (irrelevantly) that there was "no intent to deceive or defraud."

When we paid money and brought up the website ididdy.com, we believed that the mark was being used in commerce. When we contracted for packaging design and the logo for ididdy, we believed we were using the mark in commerce. When we placed a manufacturing order and deposit for ididdy manufacturing we believed we were using the mark in commerce. Monetary payment had taken place with respect to the mark and we believed that it was being used in commerce.

Not good enough. The Board pointed out that, under 15 U.S.C. Sec. 1127, "use in commerce" requires that the goods be "sold or transported in commerce." Here, Pacific Rim admitted that it "did not sell or transport its IDIDDY goods prior to the filing date of its application." Mere adoption of a mark is insufficient, as is any shipment of goods "in preparation for offering the goods for sale."

And so the Board found no genuine issue of material fact that precluded the granting of Combs's summary judgment motion, and it deemed the subject application void ab initio.

TTABlog comment: Even had Pacific Rim cleared the "use" hurdle, its prospects for success here were slim. Case in point: Snoop Dogg's victory in the SNOOPTUNES opposition in December 2009 [TTABlogged here].

Text Copyright John L. Welch 2011.


At 12:36 PM, Blogger Owen said...

According to the Wikipedia entry on Sean Combs, in 2005 he changed his stage name to "Diddy" (stating that the P got in between him and his fans). He is still known as P. Diddy in New Zealand and the UK, but I suspect one could make the argument that he is no longer using the registered mark in US commerce.

He would still be able to prevail on his common law rights to just Diddy. His application no. 78690920 for DIDDY was suspended pending the disposition of the IDIDDY mark, so I suspect DIDDY will likely proceed to registration.


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