Parody of Music Names in Branding

"picture of a music concert representing trademark parody"

Parody is something that seeps into the branding process from time to time. Depending on the good or service, parody of a recognizable music name could be appropriate. Esquire magazine highlighted the ten most memorable music parody brands. Our favorite was DON A HENLEY AND TAKE IT EASY for clothing.

In trademark law, there is nothing illegal about drawing inspiration from something for a name. Where the line is crossed is when the manifestation of that inspiration is likely to cause confusion with another party’s trademark. The Trademark Trial and Appeal Board has found on multiple occasions that the right of the public to use words in the English language in a humorous and parodic manner does not extend to use of such words as trademarks if such use is likely to cause confusion.

What this presumes is that the music name functions as a trademark in the first place, and trademarks cannot exist in a vacuum. Trademarks must attach to a good or service. In the case of music names that most likely means that the band or musician name attaches to primarily entertaining services. This is significant because trademark rights are limited to the goods or services they are used in connection with plus what would be considered a natural zone of expansion.

Unfortunately for DJ Khaled, that means his trademark infringement complaint filed against Curtis Bordenave and Business Moves Consulting Inc. d/b/a Business Consulting over trademark applications filed for DJ Khaled’s 18-month old son’s name ASAHD, ASAHD COUTURE, and A.S.A.H.D. A SON AND HIS DAD for clothing and magazine publishing services will likely fail. DJ Khaled named his son an acronym A.S.A.H.D., which means A SON AND HIS DAD.

This acronym has not been used with any goods or services, so there are no trademark rights associated with the acronym. Moreover, whatever notoriety DJ Khaled has in his name, that does not transfer to his son’s name. What his case demonstrates is that you need to know thy enemy when you select a name, which we have to assume the defendants fully anticipated in this case.

Understanding the Trademark Search Hierarchy

"pack of wolves representing trademark search hierarchy"

The game is called trademark search and the object is to find the mark that may cost you thousands of dollars to develop a new name, defend yourself in court, or start from square one a second time. Easy to see that the stakes of the game are pretty high. But the high stakes cannot consume all your time because there are a thousand other things you need to do with the business. That’s where understanding the trademark search hierarchy can be very helpful.

Believe it or not, there is a method to the madness when it comes to conducting a trademark search. When you construct a trademark search, the goal is to identify warning signals that may require more investigation to determine if one of the identified marks in a search is in fact a knockout.

The trademark search hierarchy starts with looking for the identical mark for the identical goods or services. If a mark is found in this first pass, the search is probably done. If no mark is found, then you move on to the second step.

The second step in the trademark search hierarchy is to look for the identical mark for related goods or services. The law is clear that when marks are identical, less relatedness between the goods or services is needed for their to be a likelihood of confusion. If there are no marks found in the second trademark search hierarchy, then you move to the third level.

The third step in the trademark search hierarchy is to look for parts of the mark with an identical goods or services description. Breaking up a mark may be as simple as separating its elements or as advanced as using truncation symbols and other operators. But what is imperative is that you identify the dominant portion of the mark.

And while we previously said that less relatedness between the goods or services is required when the marks are identical, the same principle applies to similar marks and identical goods or services. If the goods or services are identical, less similarity between the marks is necessary for a likelihood of confusion to exist.

If no marks are found in the third trademark search hierarchy, then you move to the fourth level. The fourth level is to look for parts of the mark in connection with related goods or services. At this point it is important to point out that the farther away from levels 1-3 in the trademark search hierarchy, the more opportunities there are to make reasonable arguments about there not being a likelihood of confusion.

The final level – the fifth level of the trademark search hierarchy – involves searching for the mark and the class numbers. This level is primarily a catchall, and most, if not all, of the marks found is level will not present an issue to the availability of your proposed mark.

It is only after following this hierarchy that a searcher can claim to have conducted a thorough trademark search, and it is this hierarchy that BOB follows to conduct its searches.