Kanye West Walks: The preliminary refusal of Kanye West’s application for the registration of SUNDAY SERVICE trade mark
20 Nov 2019
A Sunday service like no other is the order of the day; a new popular pop-up church experience hosted by the controversial hip-hop music mogul Kanye West has taken the world and recently the US Patent and Trade Marks Office (USPTO) by storm. Wests ‘Sunday Service’ is a music-centred event held weekly featuring a choir singing gospel covers of songs by Kanye West as well as other musicians, and occasional informal prayers.
In April 2019, this ‘Sunday Service’ went mainstream after West took it to the stage at the highly anticipated annual music and art festival, Coachella, complete with a range of merchandise ranging from sweatshirts to t-shirts and socks that read “SUNDAY SERVICE AT THE MOUNTAINTOP”. With all the traction gained, Kanye West went the route of filing an application for the registration of the SUNDAY SERVICE trade mark in clothing, footwear and headgear. Upon examination of the trade mark applied for, the USPTO refused the application for registration based on a prior existing registered trade mark for the identical mark.
Unbeknown to West, Jeff Jonas was granted registration for SUNDAY SERVICE in 2015 in connection with the “arranging, organizing, conducting and hosting social entertainment events; entertainment in the nature of live music in a club or concert, disc jockey performances, musical and artistic performances, music tours, dance parties and night clubs; organizing and arranging exhibitions for entertainment purposes.”
Jonas’ trade mark registration states that he started using the trade mark in September 2014 and has consistently been doing so since then. The US trade mark system follows a first to use notion as opposed to that of first to file meaning that trade mark rights are awarded based on who is the first to use a mark and not necessarily who files their application for registration first. The issue herein is therefore not that Jonas was first to file an application for the SUNDAY SERVICE trade mark but that he was the first to use it and further that the use of the trade mark by Kanye West gives rise to the likelihood of confusion between the two marks.
It is imperative to note that the purpose of trade marks is to distinguish one’s goods and/or services from those of another. With this in mind, the federal trade mark law therefore prevents registration of a trade mark that is so similar to an already registered mark that is likely to confuse consumers as to the source of the goods and/or services.
While the uses of the trade marks at issue are different – on one hand Jonas’ use is for the arranging, organizing, conducting and hosting social entertainment events including musical and artistic performances and on the other hand, Kanye West’s is in relation to clothing, footwear and headgear, there is without a doubt possibility for overlap since West first started offering the SUNDAY SERVICE merchandise for sale at the Coachella music festival. Furthermore, it is worth noting that it is common for music artists to offer for sale clothing related to the musical performances. As such, services of “entertainment in the nature of live music in a club or concert” are commonly sold through the same trade channels and used by the same group of consumers as those offering music-related paraphernalia; making the two goods and services “similar” for the purposes of assessing the likelihood of confusion. The USPTO took notice of the above in deciding to refuse Kanye West’s trade mark application.
The dominant concern is not merely to prevent buyer confusion as to the source of the goods and/or services but also to protect the owner of the registered mark from opposing commercial use of a similar mark by any new kids on the block, in this case, Kanye West.
Kanye West now has six (6) months within which to respond to the examination report (Official Action) and the concerns raised therein.
The USPTO may thereafter issue a second Official Action barring the registration of the mark. However, this does not mean that West will be obliged to cease using the SUNDAY SERVICE mark as trade mark rights are not earned by registrations but actual use of the mark. Contrariwise, the USTPO may respond by permitting the application to move forward in the registration process. At this point Jonas will decide on a crucial point; to oppose the application for registration or not to oppose.
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