When a global icon like Lady Gaga releases a new album, it causes mayhem. However, when a new brand appears that is too similar to your company’s existing brand, mayhem (and trademark infringement) can also arise.
This situation unfolded with Lost Surfboards, leading to a significant legal dispute that small business owners can learn from.
When two brands are too similar
Earlier this year, Lady Gaga revealed plans for a new album and tour, showcasing a stylized logo that aligned with her updated image. Lost Surfboards, a surfboard and apparel company, contends that this design bears a striking resemblance to its established brand. The company is accusing Lady Gaga of violating its trademark rights.
The issue arises because both parties offer clothing and accessories under the “Mayhem” name, featuring a similar logo design, potentially confusing consumers.
Lost Surfboards asserts that its brand has held common law rights since 1988 and obtained federal trademark registration in 2015 for the “Mayhem” name and design on apparel. The company is seeking a permanent court order to halt Lady Gaga’s apparel sales. It also seeks recovery of her profits and at least $100 million in damages.
The impact of the alleged trademark violations
Lost Surfboards claims that the alleged trademark violations is a detriment to its brand in two key ways:
- Likelihood of confusion: The main concern for Lost Surfboards is that consumers could wrongly assume Lady Gaga’s tour merchandise is made by, endorsed by or connected to the surf brand, which could negatively impact the company’s sales and reputation.
- Trademark dilution: Lost Surfboards argues that “Mayhem” is a well-known mark. It claims that Lady Gaga’s use diminishes its distinctiveness and unique recognition, even if consumers aren’t directly misled.
The company initially notified the singer through a cease-and-desist letter, which is a common step before filing a trademark infringement lawsuit.
Can trademark infringement be avoided?
To prevent such conflicts or identify misuse of an existing brand, consider these strategies:
- Conduct thorough searches: Before adopting a new logo or name, conduct a trademark search to identify existing ones.
- Register and maintain trademarks early: Submit a federal registration application with the U.S. Patent and Trademark Office (USPTO) as soon as possible, as this will strengthen your position in the event of infringement.
- Monitor proactively: Set up alerts for industry publications and major merchandise platforms to detect potential infringements early.
- Work with an intellectual property lawyer: Trademark law is complicated. An attorney can help you protect your brand from potential infringement and pursue legal action if needed.
In some cases, litigation may be necessary to enforce your intellectual property rights and secure damages.
Seeking legal guidance?
No company is too small to challenge a major celebrity or corporation when it comes to trademark issues. An experienced intellectual property lawyer can provide guidance on the best course of action.