VALENTINE'S DAY GREETINGS
Do you regard the phrase ONE LOVE as an expression of a singular love?
Do you relate ONE LOVE to the famous song by the late reggae singer Bob Marley?
Perhaps you consider ONE LOVE in relation to various trademarks registered or used for jewelry (Class 14), bags (Class 18), clothing (Class 25), or entertainment services (Class 41). Do you think that these existing marks should prevent registration on likelihood of confusion grounds of the ONE LOVE MANCHESTER logo shown below for goods and services in these classes?
The iconic American singer and recording artist Ariana Grande-Butera (Grande) gave a concert in May 2017 in Manchester, England, during which a bombing tragically killed 22 concert goers and injured an estimated 500 to 800 people. Two weeks later, Grande hosted a televised charity concert attended by more than 50,000 fans called “One Love Manchester” in memory of those killed and injured.
A company she owns filed an intent-to-use application in the U.S. Patent and Trademark Office (USPTO) to register ONE LOVE MANCHESTER (in stylized letters with the exclusive right to use MANCHESTER disclaimed) as a trademark for goods in Classes 14, 18, and 25 and for services in Class 41, as well as additional class coverage subsequently divided into separate applications and allowed for registration.
The Trademark Examiner refused registration in these four classes, on likelihood of confusion grounds, citing five prior registrations for matching or overlapping goods and services, owned by three unrelated registrants.
The Applicant appealed to the Trademark Trial and Appeal Board (TTAB). The Examining Attorney objected on technical grounds to some of the evidence the Applicant attempted to submit to show co-existing third-party registrations. The TTAB sustained this objection and excluded that evidence from consideration.
The TTAB then affirmed the refusal of registration based on the remaining evidence. The TTAB, in a fairly routine analysis, found that:
- There were for each class prior registrations of ONE LOVE marks for identical or related goods or services,
- there was no restriction on channels of trade in any of the registrations or the application,
- Applicant’s allegation that marks containing ONE LOVE are weak in trademark significance was not supported by the remaining evidence,
- the disclaimed geographically descriptive word MANCHESTER played a smaller source-identifying role for consumers than ONE LOVE,
- the high degree of stylization of Applicant’s mark did not outweigh the greater weight normally given words, and the standard character registered marks could appear in the same stylization,
- no matter whether consumers would perceive ONE LOVE as a reference to the Bob Marley song, or as an expression of singular love, all the marks shared a common meaning, and
- Applicant’s claim that there was no evidence of actual confusion between Applicant’s mark and any cited registration was unsupported, especially since the application was based solely on an intent to use Applicant’s mark.
In re GrandAri, Inc., Application No. 88239943 (T.T.A.B. May 1, 2024)
Undaunted, on July 1, 2024, Applicant sought a fresh review of this case by the U.S. District Court for the District of Virginia in GrandAri, Inc. v. Kathi Vidal, Case No. 1:24-cv-1140 (E.D. Va.). Applicant gave notice of its intention to introduce new evidence for consideration by the Court. In January 2025, the case entered the discovery phase.
Applicant asserted that, in holding that the marks were confusingly similar, the USPTO and the TTAB erred by:
- failing to consider the weakness of the marks at issue,
- failing to consider the dissimilarity of the marks at issue,
- determining the goods and services are related,
- discounting that the cited marks had not achieved fame and are weak,
- failing to consider the different commercial impression of Applicant’s mark and its fame and history,
- failing to consider the lack of actual confusion, and
- failing to consider the sophistication of discerning consumers who can differentiate between the different marks.
Author’s Note:
It seems possible that Applicant may prevail with the introduction of additional evidence. Some of the more compelling reasons may be:
- the inclusion of MANCHESTER after ONE LOVE points to the charity event held in Manchester, England in memory of the deadly bombing there,
- the stylization of Applicant’s mark distinguishes it from the registered marks, and
- the registered marks co-exist with each other on the Register and in the marketplace.
We recently wrote in “Lizzie Borden House has its Infringement Claim Chopped Down” about a jury verdict that allowed side-by-side businesses to use marks that traded on a common historical occurrence. ONE LOVE MANCHESTER similarly references an historical occurrence.
On this Valentine’s Day, we hope you have found our firm to be your singular love in the legal world.
For further information, please contact William M. Borchard or your CLL attorney.
Senior Counsel
Email | 212.790.9290
Bill has handled domestic and international trademark and copyright matters at the highest level for over 60 years. He has counseled and represented clients on domestic and international trademark matters concerning clearance, registration, proper use, licensing, contested administrative proceedings and infringement claims. He became Senior Counsel in January 2024 and is now focusing on providing guidance and advice to other lawyers within our firm and writing informative and engaging articles on intellectual property law developments.