+1 212 318 2000
Europe, Middle East, & Africa
+44 20 7330 7500
+65 6212 1000
Jennifer Gaeta | Bloomberg LawL.A. Triumph, Inc. v. Ciccone, No. 10-CV-06195 (C.D. Cal. Aug. 31, 2011) The U.S. District Court for the Central District of California denied defendants MG Icon, LLC and Macy's Retail Holdings, Inc.'s motion for summary judgment in a dispute with plaintiff L.A. Triumph, Inc. over the MATERIAL GIRL trademark for use in conjunction with clothing. In denying the motion, the court found that even though Madonna had a hit song in 1985 entitled "Material Girl," there were material issues of fact as to priority, likelihood of confusion, and abandonment that precluded a determination as a matter of law.
The Parties and Their ProductsL.A. Triumph sells and markets MATERIAL GIRL clothing. Triumph's predecessor in interest had filed a California trademark application for the MATERIAL GIRL mark in 1997, which was subsequently issued, and the predecessor company sold MATERIAL GIRL clothing nationwide from 1997 to 2003. In 2003, Triumph continued to sell junior clothing under this brand name, although the California trademark registration expired in 2007. Defendant Madonna Louise Veronica Ciccone recorded the "Material Girl" song in 1985, as well as a video for the song, and has performed it throughout her career (she has since been dismissed from the action for lack of subject matter jurisdiction). In 2010, defendants MG and Macy's began to advertise a line of junior clothing under the MATERIAL GIRL mark. MG had also filed for a federal trademark with the U.S. Patent and Trademark Office in 2009, for MATERIAL GIRL in International Class 25 for clothing. On October 12, 2010, Triumph instituted this action for declaratory relief and false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The remaining defendants moved to dismiss both claims.
Defendants Did Not Establish Priority as a Matter of LawThe defendants claimed that Madonna was the first to use the MATERIAL GIRL mark by recording a hit song and a video, and by using the song's title on clothing since 1985. The court determined that this claim failed as a matter of law and that summary judgment could not be entered in defendants' favor on the basis of a hit song and merchandise. The defendants argued that "Madonna is the Material Girl, and she was the first user starting in 1985, including Class 025 clothing." Triumph at 4. However, the court noted that the language in the defendants' own agreement contradicted that statement, evidencing that a MATERIAL GIRL trademark did not exist prior to Triumph's use of the mark. Specifically, an earlier draft of the defendants' agreement acknowledged that they had "no trademark or other proprietary rights." Id. There was also evidence that several other names were considered for the clothing line. "If, as Defendants aver, 'Material Girl' is a well-established mark used since 1985 for clothing, then [a witness who worked with Madonna] could not have been the person who came up with the idea to start a clothing line with the mark 'Material Girl.'" Id. Finally, although the defendants produced evidence that there was merchandise sold between 2001 and 2005, this did not show that the mark was in use before 1997. As there were serious credibility issues, the court could not find that the defendants established priority as a matter of law. Further, the court explained that even if the defendants could show use, there were issues of material fact regarding the scope of that use. The defendants argued that the scope of their protection covered concert merchandise and fashion. However, Triumph disputed that evidence, contending that it only showed that Madonna used "Material Girl" to advertise her music and that the clothing at issue consisted merely of concert paraphernalia.
Court Finds Questions of Fact on Likelihood of ConfusionThe defendants argued that the court should nevertheless grant summary judgment in their favor on the ground that there was no evidence of actual confusion and that no reasonable jury could find evidence of actual or likely confusion. Noting that a likelihood of confusion inquiry was primarily factual, the court determined that factual issues existed that could affect a majority of the factors. For example, the defendants argued that Triumph was selling its clothing in different markets and in a different price range, but it was unclear from the evidence whether the parties' clothing could end up at the same retailer. Moreover, Triumph's evidence regarding to which retailers it sold its products directly contradicted defendants' contentions. The court also found factual questions regarding pricing and whether there was an overlap with the pricing of the various clothing items. Thus, the court determined that there were questions of fact that precluded a likelihood of confusion finding at the summary judgment stage.
Court Finds Questions of Fact on AbandonmentFinally, the court determined that there were also questions of fact on the issue of abandonment. The defendants argued that because Triumph had not renewed the state trademark registration, the mark was abandoned. The court explained, however, that the issue of abandonment involved questions of fact because Triumph contended that it simply forgot to renew its registration, not that it intentionally allowed the registration to lapse. Accordingly, the court found that summary judgment was inappropriate. Disclaimer This document and any discussions set forth herein are for informational purposes only, and should not be construed as legal advice, which has to be addressed to particular facts and circumstances involved in any given situation. Review or use of the document and any discussions does not create an attorney-client relationship with the author or publisher. To the extent that this document may contain suggested provisions, they will require modification to suit a particular transaction, jurisdiction or situation. Please consult with an attorney with the appropriate level of experience if you have any questions. Any tax information contained in the document or discussions is not intended to be used, and cannot be used, for purposes of avoiding penalties imposed under the United States Internal Revenue Code. Any opinions expressed are those of the author. The Bureau of National Affairs, Inc. and its affiliated entities do not take responsibility for the content in this document or discussions and do not make any representation or warranty as to their completeness or accuracy. ©2014 The Bureau of National Affairs, Inc. All rights reserved. Bloomberg Law Reports ® is a registered trademark and service mark of The Bureau of National Affairs, Inc.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).