Global rap icon Kanye West is one of the most visible and controversial personalities on the contemporary scene. He has long been recognized as one of the best rap creators and performers of his generation. More recently, his prominence has transcended the world of music with his highly publicized embrace of President Donald Trump, making him a lightning rod for both acclaim and opprobrium from the supporters and opponents of our controversial president.
Now, the spotlight shines even brighter on Kanye West as a result of his proclamation that he has become a convert to Christianity. He has announced that henceforth, his musical career shall be dedicated entirely to his mission of spreading the Word of his faith, which brings us to the subject at hand: Kanye performed on Easter Sunday this year, with his gospel singers and other celebrities, at the Coachella music festival in California. At that event, he debuted his line of “church clothing” – dresses, jackets, scarves, footwear, headwear, etc. – under the brand SUNDAY SERVICE. In July, his company applied for U.S. trademark registration of the SUNDAY SERVICE mark in International Class 25 for these and related articles of apparel.[i] No other types or categories of goods or services are covered by the application.
On Oct. 16, the U.S. Patent and Trademark Office issued a non-final Office Action refusing registration of the SUNDAY SERVICE mark for clothing, on the sole ground that, in the examining attorney’s view, it is likely to be confused with a registration issued in 2015 for the service mark SUNDAY SERVICE in International Class 41,[ii] for use in connection with organizing and presenting live music events, music tours, dance parties and similar entertainment events.
There is at least a suggestion in the arguments for refusal set forth in the Office Action that Kanye West’s fame – he is without doubt one of the best-known, highest-profile musical performers of our day – worked against him in the examiner’s conclusion of a likelihood of confusion. In the abstract, marketing clothing is a clearly distinct and different commercial activity than providing services for organizing and presenting live music events. It is commonplace for the Trademark Office to allow contemporaneous registrations, even of identical marks, where the categories of goods or services with which the marks are to be used are sufficiently different that confusion between the two providers is unlikely. When the senior registration is exclusively in an International Class covering services, and the junior applicant’s mark is claimed only in an International Class covering goods, this circumstance, while certainly not dispositive, tends to work against a finding of likely confusion.
Additionally, as the Office Action recites, “Only those factors that are ‘relevant and of record’ need be considered”[iii] in the determination whether confusion is likely to exist. Nothing within the four corners of the Kanye West application to register SUNDAY SERVICE says anything about an intention to market the covered apparel in association with his ongoing musical performances. Indeed, the applicant is Mascotte Holdings Inc.; Kanye West’s name is only of record because he signed the application as an officer of Mascotte Holdings. But that disclosure was enough to prompt the examining attorney to undertake a relatively comprehensive internet search into the circumstances under which the applicant initially adopted and has been using the mark.
We do not suggest that such an investigation is inappropriate or out of the ordinary. Indeed, the Office Action cites ample authority for the proposition that “[e]vidence obtained from the Internet may be used to support a determination . . . that goods and/or services are related”[iv] and therefore may result in consumer confusion. And we do not presume to know exactly what motivated this examining attorney to go to these lengths in her online research. But we do wonder whether the examiner would have dug so deep to find out exactly what the applicant was doing with the mark if the applicant had been “Bob Smith” or “Casual Apparel LLC.” [v]
One of the points made in the Office Action in support of likely confusion is a reference to a Google Images search combining “DJ Escape,” the stage name of the SUNDAY SERVICE registrant Jeff Jonas, and “Sunday Service.” The Office Action reports that this search produced images both of Kanye West and of the registrant Jeff Jonas. According to the Office Action, “This illustrates that source confusion is likely because the applicant and the registrant are [sic] both use ‘Sunday Service’ in a channel of trade related to music.”
The fact that Kanye West’s recurring “Sunday Service” gospel performances, on the one hand, and the DJ events promoted by Jonas, on the other, both “move in a channel of trade related to music,” while true, seems not to prove much about whether the SUNDAY SERVICE clothing marketed by West is likely to be confused as to source with the nightclub events featuring “DJ Escape.”
In this regard, it is worth noting that Jonas has owned and presumably has continued to use his “concert services” mark SUNDAY SERVICE in the five-plus years since commercial use of that mark (as claimed in the registration) commenced. Yet, notwithstanding the examining attorney’s emphasis on the close connection between musical performances and the associated sale of apparel, Jonas has not seen fit to broaden his registration to claim rights for apparel in Class 25. Nor apparently did the examining attorney’s exhaustive web search reveal any indication that Jonas has expanded his activities to include sale of clothing.[vi]
Kanye West has the right to challenge the preliminary, nonfinal refusal of registration. We believe, as suggested above, that he has plausible arguments upon which to mount such a challenge. It is also conceivable that a business arrangement could be worked out between his company and the registrant that would enable registration of West’s SUNDAY SERVICE mark to go forward. We will be watching and will report further developments.
[i] The application is Serial No. 88524589.
[ii] It is Registration No. 4738621.
[iii] Citing M2 Software, Inc. v. M2 Commc’ns, Inc. 450 F.3d 1378, 1382 (Fed. Cir. 2006).
[iv] See, e.g., In Re G.B.I. Tile & Stone, Inc. 92 USPQ2d 1366, 1371 (TTAB 2009).
[v] In more run-of-the-mill situations, the examining attorney typically will not independently seek out facts concerning the actual commercial activities of the applicant that are extrinsic to, that is, that are not disclosed or at least suggested by the information on the face of the application for registration.
[vi] This raises an interesting proposition. Assuming it is true that Jonas has not used his mark in connection with the sale of clothing, Kanye West would appear to have prior and superior common-law trademark rights in the SUNDAY SERVICE mark as the first person to adopt and use that mark for clothing. To disrupt that common-law trademark right, Jonas would have to affirmatively prove that West’s sale of his SUNDAY SERVICE clothing line is causing a material likelihood of consumer confusion that the Kanye West products actually come from or are associated with Jeff Jonas’ business.