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...