She’s a pop star and an astronaut. Of course, she also has a line of clothing on the side. But can Katy Perry use her own name as a trademark for clothing? Who is going to stop her?
Enter Katie Perry. She’s a small business owner in Australia who designs and sells “conscious comfort” clothing that is made in Australia using eco-friendly fabrics and sustainable and ethical production techniques. Sounds lovely. She’s been doing this for a long time—before she had ever heard of the famous pop star. Katie Perry uses the name her mother gave her at birth.
A Tortuous Battle
When Katie Perry crossed paths with Katy Perry, things did not go well. Katy (the pop star) started selling shirts when her tour went through Australia. Katie (the small business owner) tried to make her stop because she was first to market, and people might get confused. That would hurt her brand. A lawsuit ensued.
Initially, Katie won. She had previously made the smart business decision to submit a trademark application. She saw the process through until her mark registered. The Australia Court concluded that her rights were superior.
Then, Katy appealed the ruling and was handed a decisive victory. The appellate court overturned the lower court. The appellate court took it one step further. It cancelled Katie’s registered trademark—her own name, and the right to continue using it as she had since 2006.
The case has been appealed yet again. This time, Australia’s High Court will hear the case. We do not have a ruling yet.
An Uncommon Case with Several Recurring Themes
Regardless of the outcome of the pending appeal, there are a few important take-aways for readers of this blog.
- You may not be able to use your own name as a trademark to sell your product: It sounds counter-intuitive, but it is true. Invest in a comprehensive clearance search early on so you have confidence that you are building your business on a solid foundation.
- Trademark litigation is protracted and time-consuming: These two Perry’s first collided in 2009 and the case is still going on. The stress and expense associated with litigation can put enormous pressure on a party to settle, regardless of the merits of the case.
- Trademark law is a matter of federal law: Outcomes in Australia may be different from what is permitted in the United States. Whatever the final ruling is, it likely will not have an impact on businesses in the U.S. However, if your supply chain or distribution channels are outside of the United States, consider applying for trademark protection in the jurisdictions that have the biggest economic impact on your business.
- Having a registered trademark and being first to market is usually enough to prevail: On the other hand, having the economic resources of a world-famous pop star can have a determinative impact on the proceedings. It is not that money can buy the outcome, but top-shelf trademark litigators can be very creative and effective.
- It is very uncommon for a trademark dispute to go on so long and have so many unexpected twists and turns: Most are resolved through negotiated settlements.
Sometimes a trademark registration is used as a shield to defend against unscrupulous imitators. Other times, it can be used as a sword to assert legal rights aggressively. Either way, a trademark registration is a powerful tool to have for protecting your brand.