Kanye West, Swish and a Lesson in Trademark Law

As we have all come to know, Kanye West is slated to drop his next album, entitled, Swish, this upcoming month. He has been dropping hints with increasing frequency, including, a tracks list this week. One thing it appears that West’s team has not done: Filed a federal trademark application for the title of the impending album. As you may know, trademark priority in the U.S. is based on use and not registration. So, if West is the first to use “Swish” in commerce in connection with music and/or other goods/services, the trademark is his. However, it probably wouldn’t hurt for West’s team to file an application with the U.S. Patent and Trademark Office (USPTO). 

Interestingly, it seems West’s team is not terribly worried about potential trademark issues, especially when we consider how they handled the intellectual property rights associated with the rapper's last album. Trademark applications for the title of the rapper’s last album, Yeezus, which was released in June 2013, are still pending with the USPTO. A number of applications for goods/services including everything from cosmetics, sports and athletic bags, and dolls to retail stores service and music production, among other things, were filed beginning in November 2013, with some applications being filed as recently as April 2014. 

To be fair, waiting until West actually begins selling the album and/or selling to t-shirts saves his legal team a step, since filing an intent-to-use application requires the applicant to follow up with the USPTO to establish that he has, in fact, started using the mark in commerce; waiting to file until the mark has actually been used in commerce (aka filing an application on a 1A basis) does not require this additional step. However, it could certainly be argued that waiting is a bit risky given the current landscape for intellectual property infringement, especially in the Far East, where nearly every company from Apple, Nike, and Goldman Sachs to Dior Homme and Hermes have been forced to initiate legal proceedings to regain their rightful trademarks after the marks have been pursued and squatted on by bad faith trademark filers.

The lesson here for brand owners: File to register your trademarks - they amount to extremely valuable assets for your brand - and file as soon as possible, especially in the Far East.