Why Can’t Deadmau5 Register his Cat’s Name as a Trademark?
Have you heard? Deadmau5 has a cat called Prof. Meowingtons, PhD, so named because he meows a lot, as in “meowing tons.” (This comes as news to us at Verna Law, however, we can accept this as true.)
Prof. Meowingtons has his own Twitter account. (Why is anyone following it?)
The Professor also has an Instagram, and he’s a feline entrepreneur who’s appeared on Deadmau5 merch and once marketed a pair of $1,000 miniature headphones for cats.
Fantastic. So, what do you do when you want to use your cat and its name for commerce (especially to hawk your own goods)? You register your cat’s name as a trademark. But it seems that there was a speed bump in the road to registration.
Emma Bassiri created meowingtons.com to sell cat-themed apparel and gifts. The trademark for MEOWINGTONS is registered.
That would seem to be the end of the story. Of course, we know better.
Late last year, the EDM star, Deadmau5, petitioned to cancel Bassiri’s trademark for Meowingtons. The reason: His cat is named Professor Meowingtons Ph.D., and he’s been using “Meowingtons” in promotional items — including the first headphones designed specifically for cats — longer than Bassiri. The DJ (real name Joel Zimmerman) claims Bassiri is a fan who stole his famous cat’s name.
Not Mr. Meowingtons
Litigation Ensues.
Here is the petition that deadmau5 (well, counsel) filed to cancel Ms. Bassiri’s mark in the Trademark Trial and Appeal Board:
http://ttabvue.uspto.gov/ttabvue/v?pno=92065193&pty=CAN&eno=1
Fame
One point of criticism: Litigation can come with a lot of puffery, high emotions, and irrelevant facts. In this particular petition to cancel the trademark, counsel spends the first 37 paragraphs of the petition describing the fame of the company. Just about all of those paragraphs, to me, are curveballs that are meant to scare the registrant in this case. But most of these paragraphs are just about deadmau5 himself. My own preference is to keep to the facts in litigation – the fame of the trademark matters, but not the fame of the owner of the trademark.
See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1818-19 (TTAB 2005) (numerous articles and national exposure on television programs such as the Tonight Show and the Grammy Award show, and local exposure in articles and mentions on local television news broadcasts insufficient to prove fame), rev’d on other grounds, 2008 WL 6862402 (D.D.C. April 3, 2008).
The proper legal standard for evaluating the fame of a mark is with respect to the class of customers and potential customers of a product or service, and not the general public. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005).
Likelihood of Confusion
Eventually, the petition alleges the use of the PROF. MEOWINGTONS mark for goods – CDs, posters, “including garments and accessories for men, women, and children, novelty figurines, posters, artwork, keychains, magnets, bags, glasses, mugs, and cell phone and tablet accessories.”
The issue that I see is that many of the goods pictured (in an exhibit of the petition) are mostly t-shirts and most of the products have a picture of the cat, but not the name of the cat on the products. Obviously, there are probably more examples that can be offered during discovery in the case. However, if what is in the petition is a representative sample of Dr. Meowington-branded products, I wonder what trademark use there is.
Another criticism is the filing of the PROF. MEOWINGTONS application. The application was filed as, and still is, what is known as an “Intent-To-Use” application under Section 1(b) of the U.S. Trademark Act. Such applications do not create any substantive rights by themselves, but permit applicants to attempt to reserve trademarks for later use, but only upon making a declaration under penalty of perjury that the applicant has a bona fide intent to use sometime in the near future.
If you or your business is actually using the trademark in commerce, then you or your business should file the application as an in-use application, showing the actual use at the time of filing the application. I have seen marks have issues because of confusion with junior marks – but it is difficult to enforce those rights when one filing made under penalty of perjury is incorrect (i.e. as an intent-to-use application instead of an in-use application).
Moving to Federal Court
After this case was filed in the Trademark Trial and Appeal Board, Ms. Bassiri filed a complaint in United States District Court for the Southern District of Florida.
Of course, Ms. Bassiri is claiming that the registration “is valid, subsisting, and in full force and effect, and therefore confers prima facie evidence of a nationwide right of exclusive use of the mark MEOWINGTONS and all confusingly similar marks used in connection with the above goods and/or services specified in the registration, pursuant to 15 U.S.C. § 1057(b), and in connection with related goods and services.”
Why can this case be moved to a United States District Court? Well, discovery in the TTAB case did not start and Ms. Bassiri (who would be the registrant/defendant in the TTAB case) did not yet file an answer in the TTAB case. So, the the ability to escalate the TTAB case and move it to federal court as a trademark infringement matter was still open, which is exactly what Ms. Bassiri did, now becoming the plaintiff and asking the District Court for monetary damages and injunctions. One request is for a “declaratory judgment, writ of mandamus, certified order to the Director of Trademarks at the USPTO, or other appropriate order to the USPTO declaring that Defendants’ App. No. 86719048 directed to the standard character word mark PROF. MEOWINGTONS should be finally rejected and that Defendants are otherwise not entitled to registration therefor.”
Looking Ahead
What should be interesting are the shades of grey in this case:
- Who used the MEOWINGTON mark first?
- What are the goods/services involved from each party?
- What level of fame matters?