Case Study: Teen Dreams Trademark Refusal for Confusion

#1 Concurrent use registration

Rule: 15 U.S.C. §1052(d) That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; …. [footnoteRef:1]; Dawn Donut Rule. [1: 15 U.S. Code]

Facts: Since 2015 trademark “Teenage Dream” has been used by Fashion Nova in 35 states. There is a state registration of this trademark in the state of California (for clothing).

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Discussion: Fashion Nova is the owner of identical trademark registered in the state of California for the same category of products – women’s clothing. It is also stated that Ms. Perry decided “to work on a denim clothing line specifically featuring blue jeans”, however, it is enough that goods are related (apparel items) and it’s not necessarily that they shall be identical. Thus, the basis for opposition – “likelihood of confusion”.

The rights of Fashion Nova are not geographically limited exclusively to the state of California. Common law rights in a trademark were established in other 34 states, regardless of the registration status.

Registration of a “Teenage Dream” trademark (geographically limited) can be based on the rights provided by concurrent use of the trademark with the Fashion Nova as a common law owner of a conflicting trademark. However, the application can be filed on the basis of actual use in commerce and not on Ms. Perry’s intent to use a trademark. Thus, after providing a statement of use to prove that a trademark is actually in use Ms. Perry can seek concurrent use registration.

Also, I would like to mention that Ms. Perry can show the good faith intent to use the mark (according to 15 U.S.C. § 1051 § 1 (b)(1)) because since 2010 Teenage Dream clothing (in particular, t-shirts printed with the words “Teenage Dream”) has been sold by Ms. Perry’s concert promoter. However, I assume that words “Teenage Dream” did not function as a trademark (could be considered as a part of design and not as source indicator). Thus, common law rights in a mark were not established, even though concert merchandise with “Teenage Dream” brought millions of dollars to concert promoter and Ms. Perry.

Conclusion: Ms. Perry has a bona fide intent to use the trademark “Teenage Dream”.

#2 “Teen Dreams” trademark – refusal of registration on the basis of confusion

Rule: 15 U.S.C. § 1052 §2 No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it –

… (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, …, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive[footnoteRef:2]. [2: 15 U.S. Code]

Facts: Trademark “Teen Dreams” has been federally registered since 1990. Trademark owner – Starline Publications, Inc. Goods/services: magazines.

Discussion: “Teenage Dream” is similar to a “Teen Dream” trademark. However, the key issue to be decided is not the “similarity” but “customers’ confusion” as to the source of goods/services. A likelihood of confusion will exist if goods/services are related. Goods and services for the mark “Teen Dreams” do not relate to t-shirts or other apparel items. This mark stands for magazines, thus, I believe that it’s unlikely that customers will mistakenly think that the source is the same.

Conclusion: Since in our case we have almost identical marks but for unrelated products, there is no ground to believe that the use of both marks will cause a confusion.

1. II. How will the trademark examiner react to Morgan’s in-use application? Will Morgan be able to register the mark “Teenage F**K’N Nightmare”? Why or why not?

To answer this question I would like to present the following issues for consideration:

1. Does “Teenage F**K’N Nightmare” printed on products function as a trademark?
2. Whether the mark has already been used in commerce?
3. Is it possible to register the mark that contains the word F**K’N?

Summary: Trademark “Teenage F**K’N Nightmare” shall be refused in registration since it doesn’t function as a trademark and it wasn’t used in commerce.

#1 Functioning as a trademark

Rule: 15 U.S. Code § 1127 – Trademark is used by a person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, ….”[footnoteRef:3]. [3: 15 U.S. Code]

Facts: The words “Teenage F**K’N Nightmare” were printed on products.

Discussion: Firstly, for Morgan it's important to show that trademark “Teenage F**K’N Nightmare” is used with the goods listed in his in-use application in a way that customers will consider it as a source indicator. Actually, it shall be shown that trademark is used in such manner that customers will definitely be able to identify the source and on this basis consider whether to purchase the goods or not. According to the facts the words “Teenage F**K’N Nightmare” were only printed on Morgan’s products (t-shirts, hats and phone cases). Customers would rather perceive them as a part of design, part of the product itself and not as a source indicator. I can name the following examples of how to prove that trademark is actually used in connection with Morgan’s products: label on the neckband of a t-shirt or tags affixed to the products[footnoteRef:4]. [4: https://www.uspto.gov/trademark/laws-regulations/specimen-refusal-and-how-overcome-refusal]

Conclusion: In order to function as a trademark words “Teenage F**K’N Nightmare” shall be capable of identifying the source of products. Since customers will not have associations with the source of the products, “Teenage F**K’N Nightmare” would not function as a trademark.

# 2 Use in commerce

Rule: Under 15 U.S.C. § 1051 §1 (a) the federal registration may be requested by the owner of a trademark if such trademark is in use in commerce[footnoteRef:5]. [5: 15 U.S. Code]

The term “use in commerce” is defined in 15 U.S.C. § 1127. In particular, the following conditions shall be met:

1. mark is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
2. the goods are sold or transported in commerce[footnoteRef:6]. [6: 15 U.S. Code]

15 U.S.C. § 1127 § 45 defines the word commerce as “all commerce which may lawfully be regulated by Congress”[footnoteRef:7]. [7: 15 U.S. Code]

According to Article 1 Section 8 Clause 3 of Constitution - The Congress shall have Power to regulate Commerce with foreign Nations, and among the several States, and with Indian Tribes[footnoteRef:8]. [8: U.S. Constitution]

Facts: Morgan decides to sell via his website products with printed words “Teenage F**K’N Nightmare”.

Discussion: For federal registration of a trademark it must be shown that such trademark has already been used in interstate commerce. Morgan should show that commerce occurs at least in 2 states. As to the website selling the goods at minimum the following information shall be available: the product for sale, its price as well as shopping cart button[footnoteRef:9]. Thus, the website shall contain sufficient ordering and purchasing information. As one of the examples of showing the interstate commerce I can name “Shipping & Delivery terms” at the website (containing information regarding the shipping of orders within the US). However, it’s not enough to show only the information at website proving that Morgan defines his target market as customers from different US states. It shall be shown that products have actually been provided to someone in 2 or more states. [9: https://www.uspto.gov/trademark/laws-regulations/specimen-refusal-and-how-overcome-refusal]

According to the facts “Morgan decides to sell… and has filed an application”. Thus, there are no pieces of evidence showing use in commerce. If I were Morgan, I would decide to file an intent-to-use application (providing that the words would function as trademark and not as a part of design).

Conclusion: In order to register a trademark Morgan shall show current interstate use of the trademark in commerce. Use in a commerce means that goods with placed on them trademark were sold or shipped to customers from different states. Simple advertising of goods at a website is not enough to establish use in commerce.

#3 Nature of a trademark

Rule: Iancu v. Brunetti, 588 U. S.__(2019)

Facts: Morgan Days has filed an in-use application on the mark consisting, in particular, of the word “F**K’N”.

Conclusion: “F**K’N” itself and as a part of the “Teenage F**K’N Nightmare” can be registered as a trademark provided that all other requirements are met.

1. III. (1) Ms. Perry wishes to file a lawsuit in the U.S. District Court for the Central District of California. Who should be the parties to the lawsuit, what causes of action should be plead, and how will the trial court decide the issues?

To answer this question I would like to present the following issues for consideration:

1. Can physical appearance be protected as a trademark?
2. Trademark infringement claim vs. False endorsement claim

Summary: Defendant – Fashion Nova; cause of action – false endorsement (unauthorized use of Ms. Perry’s identity in connection with Fashion Nova’s products; decision – in favor of Ms. Perry.

# 1 Physical appearance as a trademark

Rule: 15 U.S.C. § 1127 defines trademark as “any word, name, symbol, or device, or any combination thereof”[footnoteRef:10]. [10: 15 U.S. Code]

15 U.S. Code § 1127 – Trademark is used by a person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, …”[footnoteRef:11]. [11: 15 U.S. Code]

Facts: Katheryn Hudson is a well-known celebrity presented to the public under the stage name Katy Perry. Katy Perry has a distinct physical appearance in her “Teenage Dream” music videos – hairstyle, eye makeup, clothes, poses. Beginning in 2010 – “Teenage Dream” concert merchandise. Model with a “striking physical resemblance to Ms. Perry” promoted Fashion Nova’s “Teenage Dream” clothing line.

Discussion: Since the term trademark includes, in particular, “any symbol”, trademark law may protect the physical appearance as well, provided that it is used in connection with goods and services and functions as a source identifier for those goods and services. In order to consider Ms. Perry’s physical appearance as a trademark the following facts can be taken into account: Katy Perry as a “stage persona” is presented to public by Katheryn Hudson in a particular way and has some distinctive features, namely, hairstyle, makeup, poses, etc., thus, not only the words “Katy Perry” can be protected as a trademark (that successfully have been registered by Ms. Perry), but also the physical appearance. I do believe that Ms. Perry identity is a “powerful brand” that can function as a trademark.

Conclusion: Physical appearance may be protected as a trademark if it is used in connection with goods/services and functions as a source identifier for those goods/services. Common law trademark rights may be established.

#2 False endorsement claim

Rule: 15 U.S.C. § 1125 § 43 (a) (1) (A) - Any person who, on or in connection with any goods or services … uses in commerce any word, term, name, symbol ……. which — is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person… shall be liable..[footnoteRef:12]. [12: 15 U.S. Code]

Facts: as defined in #1

Discussion: 15 U.S.C. § 1114 §32 governs only registered trademark infringement claims. Ms. Perry can protect her rights under 15 U.S.C. § 1125 § 43.

Ms. Perry is a well-known celebrity and contributed a lot of efforts to built up her unique “public image”, create her own mark. There are no doubts that Ms. Perry can be easily recognized in the crowd. Due to the facts we can conclude that the similarity of Ms. Perry’s look-alike was strong. Fashion Nova promotion was aimed at the same target marker – women and teenagers. To my mind, Fashion Nova intentionally used Ms. Perry’s look-alike, who has very distinctive features and style, in ad campaign with the purpose of customers confusing thinking that Ms. Perry sponsored or endorsed their products. It was a kind of imitation of Ms. Perry’s identity. According to the facts customers were not confused as to the personality of a model and didn’t believe that it was Ms. Perry, however, it is still possible that customers could be confused as to the sponsorship or endorsement.

Conclusion: Fashion Nova’s ad campaign created a false impression of endorsement or affiliation/sponsorship in the minds of potential customers between their products and famous celebrity.

1. III (2) Are there any other legal issues that Ms. Perry could pursue outside of this lawsuit?

To answer this question I would like to present the following issues for consideration:

1. Whether the domain name can consist of a trademark taking into account that website is/is planned to be used for commercial purposes?
2. Can such use of a trademark constitute a trademark infringement?
3. Can such use of a trademark be defined as Cybersquatting?

Summary: Yes, to my mind, there is one more legal issue that Ms. Perry could pursue. Using of her trademark “Katy Perry” for offering competing goods constitutes bad faith and can be defined as “Cybersquatting”. Thus, Ms. Perry may brought against Morgan Days trademark dilution claim.

Rule: 15 U.S.C. § 1125 § 43 (d)(1)(A) (Anti-Cybersquatting Piracy Act (ACPA)) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—

1. has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
2. registers, traffics in, or uses a domain name that— …

• (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or …[footnoteRef:13]. [13: 15 U.S. Code (Anti-Cybersquatting Piracy Act (ACPA))]

Facts: Morgan Days is the owner of the websiteWeHateKatyPerry.org. Trademark “Katy Perry” is federally registered for entertainment services, apparel, fragrances, and cosmetics. Morgan Days decides to sell the products (t-shirts, hats, phone cases) via his website.

Discussion: In this case domain name consists of trademark “Katy Perry” as well as critical commentary – “we hate”. One of the main issues for consideration can be defined as follows: Whether such use of trademark is permissible for commercial purposes? As far as I understand initially this web page was created exclusively for criticism (“gripe site”) which I consider as permissible use of “Katy Perry” trademark since the domain name contains the indication of the website nature – criticism of famous celebrity. Thus, the non-commercial use of “Katy Perry” trademark as the part of a domain name of Morgan’s website doesn’t constitute any infringement and can be protected as a “free speech”.

However, according to the facts Morgan decides to change the non-commercial use of the website into commercial. That’s not the option for Ms. Perry to proceed against the Morgan’s website with a trademark infringement claim under 15 U.S.C. § 1114 § 32 (1), since trademark infringement is defined as 1) use in commerce of a registered mark 2) in connection with the sale, offering for sale, distribution, or advertising of any goods or services 3) which is likely to cause a confusion[footnoteRef:14]. Use of “Katy Perry” trademark can’t be defined as infringing because the key issue is “likelihood of confusion” caused by such unauthorized use. Potential customers for sure will not be confused as to the source of goods. [14: 15 U.S. Code]

I would suggest Ms. Perry to proceed with “Cybersquatting claim”, since Cybersquatting is defined as 1) registration as a domain name 2) of a trademark 3) that is distinctive or famous 4) with a bad faith intent to profit. In our case Morgan uses famous mark for offering competing goods, thus, it can be considered as “bad faith” intent on profiting the mark. Moreover, as for me it’s clear enough that those goods have a direct link to Katy Perry and her “Teenage Dream” concert merchandise due to the printed words “Teenage F**K’N Nightmare”.

Conclusion: If there is no possibility of customers’ confusion, use of trademark can’t be defined as trademark infringement under 15 U.S.C. § 1114 § 32. Registering a trademark as a part of domain name with intent to offer and sell competing goods may be defined as Cybersquatting.