On April 16th, the Los Angeles-based artists collaborative, Pizzaboyzzz, sent a Cease and Desist letter to Kendall Jenner for using “Pizza Boys” to brand a clothing line and her Apple radio show. Pizzaboyzzz has been in operation since 2015, and sells merchandise and clothing under the Pizzaboyzzz name. Jenner’s Pizza Boys applications were submitted for publication with the United States Patent and Trademark Office (“USPTO”) on March 27, 2018. Pizzaboyzzz is not a registered mark. Given the foregoing, this matter presents some interesting issues of trademark law.
When deciding on a brand name, what trademark law issues should you consider?
Defining a Mark
A trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of goods. A service mark is the same as a trademark, but it is an identifier of services instead of goods. “Pizza Boys” has applied for a trademark as an identifier for clothing and a service mark for entertainment services. It is important to identify this early on in this blog because it will have an impact on analyzing the strength of this mark and the likelihood of confusion with other marks.
Strength of the Mark Defined by Trademark Law
Trademark law places marks into one of four categories of relative increasing strength: generic, descriptive, suggestive, and arbitrary or fanciful. One of the most common reasons that marks do not proceed to registration is that the subject marks are generic or descriptive. Generic marks rarely, if ever, receive statutory protection because they merely embody the brand name of the subject goods or services. Descriptive marks are weak because they only describe applicable goods or services. However, descriptive marks are eligible to be placed on the supplemental register (a secondary registry which offers the owners’ rights, but not all of the rights afforded to owners of marks on the principal register), and if, after five years of continuous use in commerce, it can be demonstrated that the subject marks have acquired distinctiveness through consumer recognition, then they become eligible for placement on the principal register. Suggestive marks are strong marks that require consumers to exercise imagination to connect the subject marks with their associated products or services. The strongest marks are arbitrary and fanciful marks. Arbitrary marks are known words that have no actual connection with the products they are associated with. Fanciful marks are invented words, such as Google and Verizon.
When applying the foregoing trademark analysis to the Pizzaboyzzz dispute, one needs to consider the relative strength of the respective marks at issue. Neither of the marks are generic because they are not merely the names of the goods that one offered to the public. Neither of the marks are descriptive because consumers would not associate their respective goods or services simply by the marks. The Pizzaboyzzz and Pizza Boys marks may each be suggestive because they suggest that the associated merchandise and clothing have a connection to pizza. “Pizza Boys” could be deemed arbitrary in relation to her radio show because Jenner is using known words to describe a show involving the discussion of music. However, if pizza was, instead, the topic of discussion on the show, then the mark would likely be considered merely descriptive. Neither marks are fanciful because they are not invented words. Please not that although it is obvious that “Pizzaboyzzz” is not a word, Pizzaboyzzz would not be deemed fanciful because the USPTO dissects compound words to search for conflicting marks.
Searching the Availability of a Mark and the Likelihood of Confusion
Generally, a cursory search can be done through use of the USPTO website for pending and registered marks. If you find a previously registered mark, a likelihood of confusion analysis would consider whether the parties are offering similar goods or services, and whether the look, feel, meaning and sound of the marks are similar in nature. In the case of Pizza Boys and Pizzaboyzzz, the marks look similar and sound the same. Therefore, there is a likelihood of confusion between the two marks because both parties sell clothing through use of a similar mark. However, there is less of a likelihood of confusion insofar as Jenner’s Apple Radio show is concerned because Pizzaboyzzz does not offer entertainment services.
In addition to the foregoing USPTO database search, further research should be conducted to see if there are any other parties using the subject mark in commerce that may not have filed for registration. The reason for this is that United States trademark law provides “common law” rights to parties solely based on use of the applicable mark in commerce. A party that can demonstrate prior use of a mark in commerce (without registration), can still challenge registration of the junior user. In the case at hand, Pizzaboyzzz has been using its mark in commerce dating back to 2015, prior to the first use date of Pizza Boys. As such, Pizzaboyzzz is relying on its common law rights in an effort to prevent Pizza Boys from using the mark.
Solutions to the Pizzaboyzzz Problem
Trademark litigation can be a very long and expensive process. If Kendall Jenner and Pizza Boys refuse to discontinue use of the mark, Pizzaboyzzz will have to decide whether to commence litigation against what is likely to be a formidable opponent. Often, parties to a trademark dispute try to work out a settlement where they both can exist through a licensing or coexistence agreement, or use the conflict to spur beneficial marketing exposure for both parties (See: Bud Light with their Dilly Dilly cease and desist matter). Given the foregoing, consulting a trademark attorney is recommended in order to minimize the risk of unwelcome legal surprises down the road.