Similarity between two trademarks can lead to a legal dispute. Recently, the famous rock band KISS has been involved in a dispute with an upcoming rock band who has tried to trademark a potentially similar mark.
In this article, we will revisit the basics of trademarks, and examine KISS’s recent trademark dispute.
A trademark, as defined by the USPTO, is “a word, phrase, symbol, or design, or a combination thereof that identifies and distinguishes the source of goods of one party from those of others.” In other words, a trademark is used to differentiate a particular company among competitors. Trademarks protect the intellectual property and creative rights of its owner. The owner of a registered trademark can sue someone else who copies their exact or even similar mark.
Obtaining a trademark is a fairly simple process. A clearance search should be conducted first. It is important to make sure that the mark that you are trying to register is not already owned/used by someone else. After conducting a clearance search, you can file an application to register your mark with the USPTO. One needs an attorney to file the application if he or she is not currently living in the United States. However, there are also benefits of having an attorney represent you even if you are currently living in the U.S. Lawyers can avoid certain mistakes and pitfalls on the trademark application. It may seem like a simple application but failure to accurately complete it can result in refusals and delays, and spending more money to fix avoidable problems.
Upon filing, the USPTO may respond with an office action, a document detailing possible issues with your proposed trademark application. It is important to respond to this swiftly and address all the problems.
KISS, a musical group headed by Gene Simmons, is known by millions of rock fans throughout the world. Their music has become synonymous with the punk and goth subcultures popularized in the 1970’s and 80’s. KISS has opposed a 2020 trademark application submitted by an upcoming band named Wicked Kiss.
KISS trademarked their name in 1974, and now alleges that Wicked Kiss can cause confusion.
There are several legal issues. First, KISS claims that the mark is likely to cause customer confusion. This is one of the most common grounds of opposition and it means that the proposed trademark is too similar in appearance, form, or style to another. As a result, the proposed mark is likely to be indistinguishable to a potential buyer. This could result in the loss of business for companies with similar marks through, essentially, the theft of customers or a false association with the original holder of the mark. Since Wicked Kiss also produces similar rock music, KISS claims this could easily create confusion for potential KISS customers and lead to them inadvertently purchasing Wicked Kiss’s goods.
Some of the other legal issues in this case are: “false suggestion of a connection,” “dilution by blurring,” “dilution by tarnishment,” and common law protections. Furthermore, KISS alleges that Wicked Kiss’s trademark is merely a copy of their own with “[Wicked Kiss] merely [adding] the term Wicked.” This reconnects with the main issue of the case. A false association between the two bands by customers could result in the theft of KISS’s consumer base, resulting in a reduction of popularity and rendering the trademark ineffective. According to KISS, preventing the registration of Wicked Kiss would avoid dilution and maintain the uniqueness of its brand.
KISS may have a strong case against the upcoming band Wicked Kiss given KISS’s fame. Wicked Kiss could have to change their name. On the other hand, Wicked Kiss might prevail on the grounds that “countless bands feature similar terms in their names.”
It is important for both sides to have experienced attorneys to advocate for their causes and brands.
If you have any questions on trademarks, please reach out to us at MDGR LAW.
Research assistance: Jace Sapenter-Nath
Melissa D. Goolsarran Ramnauth, Esq. is a trademark and business attorney. She writes articles on trademark law. She also writes weekly articles on West Indian history and politics to raise awareness of the past, and educate the Caribbean diaspora on the need for legal contracts and trademarks.
She graduated magna cum laude from the University of Miami with a Bachelor of Arts degree in Political Science, a minor degree in History that focused on the slavery and indentured servitude eras, a minor degree in Criminology, and a Juris Doctor degree.
MDGR Law, P.A.