Pop icon Lady Gaga is no stranger to making waves, but a new lawsuit initiated by California-based surfboard company Lost International (aka Lost Surfboards), shows that even superstars can find themselves navigating choppy legal waters.
In a lawsuit filed March 25, Lost Surfboards alleges that Gaga’s use of the MAYHEM name and logo for her recent album and associated concert tour and merchandise, infringes Lost Surfboard’s own MAYHEM trademark for surfboards, clothing, and other merchandise. Lost Surfboards owns a U.S. registration (No. 4382416) for the mark MAYHEM (in standard characters) for surfboards in Class 28, which registered August 13, 2013, and claims use of the mark since at least as early as June 1, 1989. The photograph below showing Lost Surfboards’ MAYHEM logo on a surfboard was filed as a specimen of use with Lost Surfboard’s renewal application. Lost Surfboards claims use of the mark for clothing and other merchandise since 1988, and has used the mark continuously since that time.
While titles of single creative works, or elements that are used artistically or decoratively, may not necessarily be accorded trademark rights, when the use is by an artist as famous as Lady Gaga, trademark rights can arise (and often quickly) once the public associates it with a single source. In this case, Lost Surfboards claims that Gaga’s MAYHEM logo is “substantially similar if not nearly identical” to its own, that consumers are likely to be confused as to the source of the merchandise, and/or that her use will weaken the strength of Lost Surfboard’s well-recognized brand. Examples of the two logos from the lawsuit are shown above. Lost Surfboards is seeking no less than $100 million in damages and an injunction on Gaga’s use of the MAYHEM mark going forward.
This lawsuit raises critical questions for brand owners:
- When does use of a word, logo, or slogan on merchandise associated with an artistic or entertainment property cross over into trademark use such that it might give rise to an infringement claim?
- If use of the word, logo, or slogan does not constitute trademark use under the Lanham Act, because, e.g., it is used as the title of a single creative work, or because consumers will perceive the use as nothing more than a design element on clothing, can that use constitute trademark infringement?
This lawsuit also echoes themes we covered in our May 2020 newsletter article, Title of a Single Creative Work… or Something More?
In the Shannon DeVivo v. Celeste Ortiz opposition proceeding (No. 91242863) (TTAB Mar. 11, 2020) discussed in our 2020 article, the Board concluded that ENGIRLNEER – originally used in DeVivo’s children’s book – qualified for trademark protection because DeVivo had created a distinct impression in that coined word separate and apart from the title itself. In other words, ENGIRLNEER was more than a title of a book – it acted as a trademark because DeVivo used it consistently in branding, promotional materials, and in a manner that led consumers to associate it with a broader source of goods/services.
It will be interesting to see how the analysis plays out in this much more visible dispute, involving one of the world’s biggest popstars.
