Ceremony slapped Urban Outfitters with an intellectual property infringement lawsuit recently. The Northern California-based band is alleging that the hipster retailer copied its "Rose Mark", which the band has been using on their album covers, merchandise (think: clothing and accessories), advertising materials, and an array of other things, since late 2004. In addition, the mark was use prominently in a book that the band released in 2010.
Anthony Anzaldo, Jake Casarotti, Justin Davis, Ross Farrar, Andy Nelson, collectively, Ceremony, allege that Urban Outfitters put their print on a shower curtain (and maybe some other items) and sold it, as did several other parties. Ceremony claims that they have spent a considerable amount of time and resources to develop and promote the mark, and while they lack a federal trademark registration, the public has come to identify them with the Rose Mark. In fact, Ceremony's complaint states that its connection with the mark is so strong that "fans of Ceremony frequently have the Ceremony Rose Mark tattooed on their bodies as a sign of allegiance to and recognition of the band."
The complaint, which was filed late last week in the California Central District Court and includes the side-by-side image pictured below, charges Urban Outfitters with common law unfair competition and trademark infringement, false designation of origin and false descriptions, violation of California Business and Professions Code s. 17200 (which prohibits "unfair competition […] including any unlawful, unfair or fraudulent business act or practice and unfair, deceptive, untrue or misleading advertising"), and copyright infringement.
As for what Ceremony wants: The band is asking for over $100,000 in monetary damages (which will account for any profits Urban Outfitters made from the sale of the items bearing the Ceremony mark, as well as other damages). According to the complaint, the members of Ceremony also want the court to order Urban Outfitters and any other parties selling anything with its Rose Mark print on it (or any mark similar to it) to refrain from doing so, both immediately and permanently. It also wants Urban Outfitters to turn over all remaining inventory in its possession and to recall inventory being held by third parties.
Interestingly, while Ceremony has certainly used its Rose Mark on an array of goods, ranging from t-shirts to books, it has not (at least to my knowledge) started putting its signature print on home goods. Thus, the question is: Do they really have trademark infringement grounds on which to sue here? As you may know, trademarks are registered by class. So, class 25, for instance, covers clothing and footwear. Class 18 extends to leather goods; class 16 to paper goods, and so on. In the case at hand, Ceremony does not have a federally registered trademark. As a result, it is limited to claiming common law trademark infringement - infringement that is limited geographically to the geographic area in which the mark is used and is covered by the various state statutes - as opposed to federal trademark infringement, which is a national system governed by the Lanham Act. Because federal registration is not required to establish rights in a trademark (use of the mark in commerce is the establishing feature), common law rights arise from actual use of a mark. Thus, it would seem that in order for Ceremony to effectively bring a trademark claim, it would have to have been using its mark in connection with the type of goods at issue - aka class 24 type goods (home goods).
Famous marks, ones that are very well known product names and service names, are recognized to exist among all classes of goods and services; that likely isn't the case here. While Ceremony's Rose Mark may be very well known among its fans, I doubt it would be considered an objectively famous mark, such as Starbucks or Apple. As a result, copyright law, which automatically covers original designs that are fixed in a tangible medium (anything from a book to a t-shirt and beyond) seems to be Ceremony's best bet here. Let's hope for Ceremony's sake that it federally registered its copyright, though, because in order to sue on copyright infringement grounds, the copyright must be federally registered. More to come …