Despite experiencing less than stellar sales growth over the past several years, the Gap and its intellectual property remains almost universally recognizable. Not surprisingly, the company is serious about enforcing its trademarks, as indicated by the trademark battle it recently waged against one of the founding members of The Gap Band, an American R&B and funk band which rose to fame during the 1970s and 1980s.
Turns out, Ronnie J. Wilson, one of founders of the band, filed a trademark application for the “Gap Band” in the class of goods/services that covers “clothing, namely, hats, t-shirts, and sweatshirts for sale at live music performances, live music concerts, live music shows and personal appearances.” In response, the Gap has asked the Trademark Trial and Appeal Board (“TTAB”) to prevent Wilson’s mark from being federally registered, claiming that Wilson’s “use and registration of [the Gap Band trademark] will damage [the Gap] by trading on the enormous goodwill associated with its mark and diluting its distinctiveness.”
As you may know, before a trademark may be enforced on a nationwide (as opposed to state-by-state) basis, it must be registered with the U.S. Patent and Trademark Office (“USPTO”). This is a multistep process. For instance, the mark must be published for opposition in the Official Gazette, a weekly publication of the USPTO. After the mark is published, any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If no opposition is filed or if an opposition is unsuccessful, the application enters the next stage of the registration process.
In Gap’s notice of opposition, the San Francisco-based retailer emphasizes that “the marks of the parties are confusingly similar in sight, sound, and commercial impressions; notably, [Wilson’s trademark] incorporates [Gap’s] ‘GAP’ mark in its entirety.” The retailer further argues that Wilson’s “addition of the word ‘BAND’ to its ‘GAP’ mark does not result in a mark that is substantially different.”
It is worth noting that in order for a trademark to be registered with the USPTO, the filing party must establish a number of elements, one of which is that his mark is not “confusingly” similar to another previously filed mark owned by another party that extends to related goods and services.
Gap states that the basis of its opposition includes more than 15 marks it had previously registered – including GAP, GAP KIDS, BABY GAP, and GAP BODY – which cover goods/services in classes related to “retail clothing store services,” and “clothing namely shirts, blouses, gloves, scarves, socks, and shoes,” among others. Gap asserts that it “is the owner of all right, title and interest in and to the [previously noted] ‘GAP’ trademarks in connection with retail clothing based on first use in commerce as early as 1969.”
While Wilson claims in his trademark application that he began using the “Gap Band” trademark on April 1, 1967, Gap argues in its opposition that Wilson’s “musical group did not go by the name Gap Band until the mid-1970s,” and thus “the filing date of [Wilson’s] application is decades after the acquisition of rights in the GAP Marks by [Gap] or its predecessors in interest.”
This is by no means the first time Gap has acted to enforce its trademarks. The company cites in its opposition precedent from a 2011 federal district court decision from Gap, Inc. v. G.A.P. Adventures Inc., which identified Gap as “‘one of the most famous and recognizable brands in the United States’ and the Gap [trademarks] as ‘famous and widely recognized by the general consuming public’ for purposes of dilution.” The opposition at hand further cites a previous opposition, from 2008, which determined, the Gap had “established that its GAP trademarks are famous and thus entitled to a broad scope of protection.”
Given Gap’s trademark appeal history and robust portfolio of trademarks, it is not surprising that the retailer is attempting to stop Wilson’s application in its tracks. For now, the Gap Band will have to hope for a favorable ruling before proceeding with its mark.