trademarks Archives - Morris Law Center

Are we in Trouble For Copying The Red Hot Chili Peppers Logo?

We previously wrote about whether there is a Likelihood of Confusion Between “RUN DMC” And “RUN MLC” so if you missed that one, check it out.

For reference, the Red Hot Chili Peppers (“RHCP”) have three registrations that are live with the United States Patent and Trademark Office (“USTPO”).

Here’s the Full Trademark for reference: 

Word MarkRED HOT CHILI PEPPERS
Goods and ServicesIC 009. US 021 023 026 036 038. G & S: PRE-RECORDED VIDEO CASSETTES, PRE-RECORDED AUDIO DISCS, PRE-RECORDED AUDIO CASSETTES AND TAPES, CDs, DIGITAL AUDIO DISCS, DIGITAL VIDEO DISCS, PHONOGRAPH RECORDS FEATURING MUSICAL PERFORMANCES. FIRST USE: 19830000. FIRST USE IN COMMERCE: 19830000

IC 016. US 002 005 022 023 029 037 038 050. G & S: STICKERS, PHOTOGRAPHS, POSTERS, BIOGRAPHICAL PAMPLETS, SONGBOOKS, CALENDARS. FIRST USE: 19830000. FIRST USE IN COMMERCE: 19830000

IC 025. US 022 039. G & S: T-SHIRTS, BOXER SHORTS, SWEATSHIRTS, SOCKS, HATS, SOLD TO FANS OF APPLICANT’S ENTERTAINMENT SERVICES. FIRST USE: 19830000. FIRST USE IN COMMERCE: 19830000

IC 041. US 100 101 107. G & S: ENTERTAINMENT SERVICES IN THE NATURE OF LIVE PERFORMANCES BY A MUSICAL GROUP. FIRST USE: 19830000. FIRST USE IN COMMERCE: 19830000

Standard Characters Claimed
Mark Drawing Code(4) STANDARD CHARACTER MARK
Serial Number76627246

 

Word MarkRED HOT CHILI PEPPERS
Goods and ServicesIC 041. US 107. G & S: entertainment services in the nature of live performances by a musical group. FIRST USE: 19830000. FIRST USE IN COMMERCE: 19830000
Mark Drawing Code(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code26.01.08 – Circles having letters or numerals as a border; Circles having punctuation as a border; Letters, numerals or punctuation forming or bordering the perimeter of a circle
26.01.21 – Circles that are totally or partially shaded.
26.01.28 – Circles with irregular circumferences; Miscellaneous circular designs with an irregular circumference
Serial Number74071459

 

Word MarkRED HOT CHILI PEPPERS
Goods and ServicesIC 016. US 002 005 022 023 029 037 038 050. G & S: stickers, [ photographs, ] posters [, biographical pamphlets ]. FIRST USE: 19830000. FIRST USE IN COMMERCE: 19830000
Mark Drawing Code(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code24.17.25 – Biohazard symbol; Degree sign (°); Equal sign (=); Greater than symbol > (mathematical); Handicapped symbol; Hazardous materials symbol; Less than symbol < (mathematical); Pound sign (#)
26.01.08 – Circles having letters or numerals as a border; Circles having punctuation as a border; Letters, numerals or punctuation forming or bordering the perimeter of a circle
Serial Number74068546

In the event of Morris Law Center attempting to trademark this logo, the United States Patent and Trademark Office (“USPTO”) will consider whether there is a likelihood of confusion between the trademarks. In regard to the design, they are very similar. However, the RHCP only protected this trademark in regard to live entertainment, recorded audio, stickers, and clothing.

As we are a law firm, we would not normally compete in these categories, so we are likely safe to use this logo to advertise legal services. However, should we begin to sell t-shirts with the logo, we would likely be in violation of the trademark.

So… who wants a Morris Law Center t-shirt with this logo on it?

The intellectual property attorneys at Morris Law Center love to discuss trademarks. Give us a call, or reach out via our contact form, to set up a complimentary consult.

Is There a Likelihood of Confusion Between “RUN DMC” And “RUN MLC”?

The United States Patent and Trademark Office (“USPTO”) will not register a new trademark if there is a likelihood of confusion between the new trademark application and a currently registered live trademark. 15 USC § 1052(d). To determine whether there is a likelihood of confusion between two possible marks, the USPTO considers a number of factors, namely:

1. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.

2. The similarity or dissimilarity and nature of the goods or services as
described in an application or registration or in connection with which a
prior mark is in use.

3. The similarity or dissimilarity of established, likely-to-continue trade
channels.

4. The conditions under which and buyers to whom sales are made,
i.e. “impulse” vs. careful, sophisticated purchasing.

5. The fame of the prior mark (sales, advertising, length of use).

6. The number and nature of similar marks in use on similar goods.

7. The nature and extent of any actual confusion.

8. The length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.

9. The variety of goods on which a mark is or is not used (house mark,
“family” mark, product mark).

10. The market interface between applicant and the owner of a prior
mark:
– a. a mere “consent” to register or use.
– b. agreement provisions designed to preclude confusion, i.e. limitations
on continued use of the marks by each party.
– c. assignment of mark, application, registration and good will of the
related business.
– d. laches and estoppel attributable to owner of prior mark and
indicative of lack of confusion.

11. The extent to which applicant has a right to exclude others from
use of its mark on its goods.

12. The extent of potential confusion, i.e., whether de minimis or
substantial.

13. Any other established fact probative of the effect of use.

These factors are often referred to as the Du Pont factors since they originated from the 1973 Supreme Court case of In re E. I. Du Pont de Nemours & Co. The importance of the elements will vary from case to case.
As an example, we could compare the well-known logo for the band RUN DMC with a possible “RUN MLC” Mark.

https://www.instagram.com/p/BsrnHZBn6yh/?utm_source=ig_web_button_share_sheet

The “RUN DMC” Mark is registered under IC 009, IC 025, and IC 041 and is
registered for use with, among other things, musical recordings, clothing, and live musical performances. “RUN MLC” would hypothetically be used in connection with the provision of legal services.

If this Firm were to apply for a trademark on the “RUN MLC” logo the USPTO would consider those Du Pont factors which applied. Under the first factor, there is a strong similarity of the marks in their appearance which weighs in favor of a likelihood of confusion and thus against registration. On the other hand, since Morris Law Center provides legal services, there would likely be a finding that there was no similarity in the goods and services offered which would weigh in favor of registration and against
possible confusion. The third factor would likely not apply, but the fourth factor deals with the circumstances under which sales are usually made of the products in question and would likely favor registration since consumers of legal services are usually careful and sophisticated. A trademark examining attorney would likely decide that under this
scenario the remaining factors were simply inapplicable.

Taken together, a trademark examining attorney would likely find that there was no likelihood of confusion that would prevent this Firm from registering the hypothetical “RUN MLC” logo. However, this would be a close call and it would depend largely on which factors the trademark examining attorney decided were predominant. If the examining attorney believed that the first factor was predominant over the second and fourth factors, then registration would be denied. This also assumes that MLC only tried to use the “RUN MLC” in advertising legal services. If it were to put the logo on T-shirts then the nature of the goods would be identical to one of the uses registered for “RUN DMC” and registration would almost certainly be denied for that category.

If you have an intellectual property question, call us now to set up a complimentary consultation before anything is set in stone. We love answering questions!