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Blog

Distillations: Madonna is Not Impressed

April 11, 2017

Blog

Distillations: Madonna is Not Impressed

April 11, 2017

Back to Fish's Trademark and Copyright Blog

 

Any business marketing a new consumer product wants to give their creation a snappy and memorable name, and craft brewers in particular seem especially fond of names with puns and pop culture references.  But wittiness, alas, is not the sole criterion for judging a good trademark, as one Texas craft brewer is now learning.

On March 3rd, an entity affiliated with pop icon Madonna filed a trademark opposition proceeding at the USPTO against an application for the mark MALTERIAL GIRL for beer filed by Weathered Souls Brewing of San Antonio, Texas.

MG Icon, the entity which manages Madonna’s “Material Girl” brand, owns multiple trademark registrations and pending applications for MATERIAL GIRL for a wide variety of goods from clothing to accessories to cosmetics to housewares.  According to the pleading, MG Icon plans “to become a truly lifestyle brand”.

None of these trademark filings, however, say anything about food or beverages.  Indeed, in the Notice of Opposition, MG Icon expressly states that it has chosen not to use or associate the MATERIAL GIRL mark with alcoholic beverages “as that would be contrary to the image of the brand”, which is targeted to teens and young women.  How to bridge the gap?

The Notice of Opposition relies heavily upon the literal similarity of the marks in support of its claim that confusion is likely.  But this strikes me as more of a dilution case if there ever was one, and Madonna does not disappoint, alleging that the mark is famous and that the MALTERIAL GIRL mark would dilute her brand by tarnishment and (implicitly) blurring.

The Trademark Trial & Appeal Board is not known as a friendly forum for dilution claims, so it will be interesting from a trademark-nerd prospective to see how this case plays out.  Weathered Souls’ deadline to file an answer is April 12th.  But the takeaway for craft brewers, vintners and distillers out there is that no matter how clever and edgy your product name may be, you still need to make sure it’s available and not going to land you in potentially costly litigation.

Blog Authors

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Robert M. O'Connell, Jr. | Of Counsel

Bob O’Connell devotes his practice to providing comprehensive trademark and copyright strategic advice, prosecution and enforcement for clients across many industries. He helps clients prevent and solve problems involving all aspects of domestic and international trademark law, as...

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