On May 20, 2014, Blue Sphere Inc. doing business as Lucky 13 (hereinafter “Lucky 13” or “Plaintiff”) and Robert Kloetzly filed a lawsuit in California Federal Court against Taylor Swift (hereinafter “Swift”) and her business entities alleging trademark infringement, unfair competition, trademark dilution, and common law misappropriation. Plaintiff is seeking injunctive relief, Swift’s profits, his lost profits, damages, including punitive damages and attorney fees. Lucky 13 owns multiple U.S. Trademark Registrations for LUCKY 13 for goods included but not limited to the following categories: clothing in International Class 25, various types of bags and purses in International Class 18, jewelry in International Class 14, hair products and body sprays in International Class 3, and other consumer goods related to automobiles and motorcycles. It is alleged that Swift started selling clothing under the mark LUCKY 13 sometime in 2012. In the Complaint, it is also alleged that Swift also started to sell other merchandise under the brand LUCKY 13 in and about that same time.
Lucky 13 further claims that Swift had filed about sixty federal trademark applications with the United States Patent & Trademark Office (USPTO). Many of these trademarks were for apparel and similar goods. It seems curious that Swift pursued trademark registrations for other clothing brands, but choose not to file an application for her mark LUCKY 13. Lucky 13 contends that this was because Swift was aware of their use of LUCKY 13, and knew that an application would be refused. There is ample discussion in the Complaint with regard to Swift being a smart entrepreneur. However, this is a strategic and backhanded compliment to imply that she should have known better, before violating Lucky 13’s trademark rights.
Plaintiff contends that Swift’s use of the mark LUCKY 13 is likely to cause confusion as to source and origin because both parties’ goods are sold in the same distribution channels at similar price points. The parties appear to be targeting the same consumer demographic. Plaintiff claims that Swift markets herself as liking fast cars and dangerous men and by admission Lucky 13 targets the same consumer type.
Each federal circuit court uses different factors to evaluate and determine if there is a likelihood of confusion as to source. The Federal Circuit, as well as the Trademark Trial and Appeal Board utilize 13 factors from E.I. Dupont DeNemours & Co., 476 F.2d 1357, 1361, U.S.P.Q. 563, 567 (CCPA 1973). See our firm site page entitled Likelihood Of Confusion Refusals – 2(d) Refusals for a list of these 13 factors. See also Stone Lion Capital Partners, L.P. v. Lion Capital, LLP, 110 USPQ2d 1157 (Fed.Cir. 2014)[precedential] or our blog post entitled Federal Circuit Court Affirmed: Stone Lion Capital And Lion Capital Confusingly Similar.
This likelihood of confusion analysis between Lucky 13 and Swift will take into consideration the following eight factors (utilized by the Ninth Circuit): (1) strength of the trademark; (2) proximity of the goods or services; (3) similarities of the trademarks; (4) actual confusion evidence; (5) marketing and distribution channels utilized; (6) type of goods and the degree of care utilized by the relevant consumer; (7) defendant’s intent in selecting the trademark; and (8) the likelihood of expansion of goods or product lines.
There is no mechanical test in reaching a decision on the issue of likelihood of confusion. The Ninth Circuit has held that the list of factors is not exhaustive and other considerations may be taken into account depending on the facts presented. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). In New York, the Second Circuit uses the factors that were set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2nd Cir.) cert. denied, 368 U.S. 820 (1961). Many of the factors overlap with the Ninth Circuit’s list. However, the Second Circuit also considers the quality of the defendant’s products.
This case will surely be one you want to monitor. It appears that Lucky 13 has a strong foundation to claim trademark infringement and other violations, but I’m sure Swift’s legal team will aggressively defend the matter. If it is true that attempts to resolve the matter were made, but were unsuccessful, then Swift must believe she too has a legitimate claim to use the trademark LUCKY 13. One should always conduct a full U.S. search before filing a trademark application with the USPTO or before using the mark in commerce. If you are interested in learning more about trademark clearance searches, please feel free to contact one of our New York trademark attorneys for a courtesy consult.