When Surfboards and Superstars collide: How to avoid a wipeout [or Mayhem] Sterne, Kessler Goldstein & Fox P.L.L.C.

The lawsuit, filed on March 25, claims that Gaga’s recent album, concert tour, and merchandise use of the MAYHEM logo and name infringes Lost Surfboards’ own MAYHEM trademark. This trademark is used for surfboards and clothing. Lost Surfboards has a U.S. registration number (No. The mark MAYHEM in standard characters for surfboards of Class 28 was registered on August 13, 2013. It claims to have been used since at least June 1, 1989. The photo below, showing Lost Surfboards MAYHEM logo on surfboards, was filed with Lost Surfboards renewal application as a sample of use. While trademark rights may not be granted for titles of creative works or elements used in an artistic or decorative manner, when used by a famous artist like Lady Gaga, trademarks can be obtained (and quickly) as soon as the public links the work with one source. In this case Lost Surfboards claims Gaga’s MAYHEM is “substantially identical if not nearly so” to their own logo, that consumers will be confused about the source of the merchandise and/or her use of the well-recognized Lost Surfboards brand. The two logos are shown in the above image. Lost Surfboards is seeking no less than $100 million in damages and an injunction on Gaga’s use of the MAYHEM mark going forward.

This lawsuit raises critical questions for brand owners:

When does use of a word, logo, or slogan on merchandise associated with an artistic or entertainment property cross over into trademark use such that it might give rise to an infringement claim?

If use of the word, logo, or slogan does not constitute trademark use under the Lanham Act, because, e.g., it is used as the title of a single creative work, or because consumers will perceive the use as nothing more than a design element on clothing, can that use constitute trademark infringement?

This lawsuit also echoes themes we covered in our May 2020 newsletter article, Title of a Single Creative Work… or Something More?

1. In the Shannon DeVivo v. Celeste Ortiz opposition proceeding (No. 91242863) (TTAB Mar. ENGIRLNEER was more than a title of a book – it acted as a trademark because DeVivo used it consistently in branding, promotional materials, and in a manner that led consumers to associate it with broader sources of goods/services. In other words, ENGIRLNEER was more than a title of a book – it acted as a trademark because DeVivo used it consistently in branding, promotional materials, and in a manner that led consumers to associate it with a broader source of goods/services.
2. It will be interesting to see how the analysis plays out in this much more visible dispute, involving one of the world’s biggest popstars.

Story originally seen here