Beginning early this year, while Louis Vuitton was busy staging a pop-up shop in New York to debut Virgil Abloh’s Spring/Summer 2019 collection, with its parent company LVMH’s financial director Jean-Jacques Guiony later pointing to the brand’s “temporary pop-up stores [as helping to boost] consumer interest” for the group’s brands, Kanye West began hosting pop-ups of his own. Instead of offering up Yeezy-branded wares to rabid fans and resellers, though, the rapper’s temporary outposts have had a different focus: spirituality.
A new “pop-up church experience,” as the New Yorker’s Jia Tolentino described it this spring, Kanye West has embarked on a near-weekly endeavor called Sunday Service. Usually “a small, invite-only musical gathering, sometimes held in a room saturated with monochrome light, sometimes in a verdant field in Calabasas,” Sunday Service went mainstream in late April when West brought it to the stage at the heavily-attended Coachella Music Festival, complete with merch – ranging from tie-dye sweatshirts that read, “SUNDAY SERVICE AT THE MOUNTAINTOP” to cotton t-shirts adorned with the words, “TRUST GOD” – which flew off shelves, as Kanye-created products tend to do.
This summer, in the wake of the initial offering of his religion-themed wares, which have since been made more widely available on West’s e-commerce site, the rapper’s legal counsel has sought to get him – by way of his intellectual property holding company, Mascotte Holdings, Inc. – a trademark registration for the “Sunday Service” mark in connection with his use of the term on “bottoms as clothing; dresses; footwear; headwear; jackets; loungewear; scarves; shirts; socks; and tops as clothing.”
The (preliminary) problem? According to an examining attorney for the U.S. Patent and Trademark Office (“USPTO”), someone else beat Kanye to the punch.
In an Office Action (i.e., the rather routine letter sent by the USPTO to notify a trademark applicant about issues with his application, including the reason why registration is being refused and/or what requirements must be satisfied in order for the application to move forward), which was sent this week, USPTO examiner Alyssa Paladino Steel preliminarily shot down the application for registration, citing an existing trademark registration for the very same trademark.
It turns out, a New York-based man named Jeff Jonas – better known as DJ Escape – was granted a registration for “Sunday Service” back in 2015 in connection with the “arranging, organizing, conducting, and hosting social entertainment events; entertainment in the nature of live music in a club or concert, disc jockey performances, musical and artistic performances, music tours, dance parties and night clubs; organizing and arranging exhibitions for entertainment purposes.”
It is worth noting at the outset that the fact that Jonas was the first to actually file a trademark application for “Sunday Service” (and be granted a registration for it) is not necessarily a deal-breaker, as the U.S. trademark system awards rights based who is the first to use a mark and not who is the first to file a trademark application. In other words, being the first to file an application to does not necessarily guarantee priority to the applicant. The date of first use in the U.S. is the relevant factor.
As such, the issue here for Kanye is not that Jonas was the first to file an application for the “Sunday Service” trademark. It is that he was the first to use it. According to his trademark registration, Jonas started using the mark in September 2014 and seems to have been using it consistently since then.
As Steel stated in the Office Action, Kanye’s “applied-for mark ‘Sunday Service’ is refused because of a likelihood of confusion with [Jonas’] mark.” After all, given the purpose of affixing products or services with trademarks, which is to help consumers to easily distinguish the products/services of one company from those of other companies, federal trademark law “bars registration of a trademark that is so similar to an already-registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.”
Steel points to two of the key factors use for determining whether there is a likelihood of confusion – “the similarities between the [two] marks and the relatedness of the goods and/or services” being used in connection with those marks – and states that the trademarks here are “identical in appearance, sound, and meaning, ‘and have the potential to be used . . . in exactly the same manner.’”
In terms of the goods/services for which the two marks are being used, which is a significant consideration given that trademarks are registered by individual classes of goods and/or services (as to not provide monopolies for entire phrases and words), the Office Action engages in a discussion of the overlap of the goods/services at play.
Steel initially asserts that the two parties’ “goods and services need not be identical or even competitive to [give rise to] a likelihood of confusion,” and instead, they only beed to be “related in some manner.” Or, she states, there may be a likelihood of confusion “if the circumstances surrounding the marketing [of the two marks] is such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”
With this in mind, Steel states that while the uses of the trademarks at issue here are different – Jonas is using his mark for the “arranging, organizing, conducting, and hosting social entertainment events; entertainment in the nature of live music in a club or concert, disc jockey performances,” etc., while Kanye is using his on garments – there is room for overlap, since Kanye “first started selling [his Sunday Service] clothing at the music and arts festival known as Coachella.”
Pointing to Maroon 5, Taylor Swift, Lizzo, Ed Sheeran, and The Chainsmokers as examples of artists that have offered “clothing … [in connection with] tour performances,” Steel notes that it is “common for music artists to feature clothing related to [their] musical performances.” As a result, she states that services consisting of “entertainment in the nature of live music in a club or concert” are commonly “sold or provided through the same trade channels and used by the same classes of consumers” as those offering music-related garments, making Jonas’ and West’s “goods and services related for likelihood of confusion purposes.”
Still yet, Steel notes “that a search of the [Jonas’] stage name and the mark ‘Sunday Service’ results in images of both [him] and [Kanye West],” which she says “illustrates that source confusion is likely because [Jonas and West] are both using ‘Sunday Service’ in a channel of trade related to music.”
As a result of such a risk of confusion between the two parties due to their use of the same trademarks, Steel has refused registration for Kanye’s “Sunday Service” mark, noting, in closing, that the “overriding concern” at play here “is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant [i.e., Jonas] from adverse commercial impact due to use of a similar mark by a newcomer,” which is Kanye here.
Counsel for Kanye now has six months to respond to the examiner’s concerns. After they provide a response (as they almost certainly will, focusing on the level of consumer recognition in Kanye West’s “Sunday Service” mark and attempting to drive home differences between the two parties’ goods/services), the USPTO may issue a second, non-final Office Action barring the registration of the mark. If the USPTO were to do that, it is important to note that that would not bar West from continuing to use the “Sunday Service” mark on merch or from policing others’ unauthorized uses of it. This is because trademark rights are not necessarily earned by way of registrations but actual use of the mark, which means that even if West’s mark is shot down by the USPTO, he still has rights in the name.
Conversely, the USPTO may respond by permitting the application to move forward in the registration process, at which point Jonas might choose to oppose the mark, himself. Stay tuned …