Katie Perry Defeats Katy Perry
Music icon, Katy Perry, recently lost a decade-plus trademark battle with Australian fashion designer, Katie Perry. Per Business Insider, "Sydney-based Katie Perry filed the lawsuit in 2019 and claimed the pop singer disregarded her trademark by selling clothing merchandise on her Australian tours between 2014 and 2018, Reuters reported." https://www.businessinsider.com/katy-perry-loses-trademark-battle-with-designer-called-katie-perry-2023-4
Interestingly, both brands emerged around the same time: "The clothing designer registered her brand name Katie Perry in 2008, a year after she started selling clothes under that name. It was the same year that Perry hit the big time with her song 'I Kissed a Girl.'" Id.
The dispute raises the oft-asked question of whether another business can prevent an entrepreneur from using his/her own name as the name of his/her business. Because the case takes place in Australia, however, this blog will not opine or dig into nuances of Australian trademark law.
Increasingly, U.S. courts answer the question above in the affirmative in order to prevent consumer confusion. As one District Judge stated, “[A] person has no right to use his name as a trademark simply because of the fortuity of his parents and their choice of names. The world is full of people who cannot use their names in whole industries: Marriotts in motels, Hugheses in oil tools, and McDonalds in fast foods.” W-K-M Div. of Joy Mfg. Co. v. WK Industries, 2 U.S.P.Q.2d 1967, 1987 WL 15500 (S.D. Tex. 1987).
The Court in W-K-M considered the following familiar factors when evaluating a likelihood of confusion:
1. Examples of actual confusion;
2. Whether the trademark is descriptive, suggestive, or arbitrary;
3. Similarity in design of the marks;
4. Similarity of the products with which the marks are used;
5. Identity of advertising media utilized;
6. Identity of purchasers; and
7. Defendant's intent.
Id. The Court found a likelihood of confusion and awarded a permanent injunction. Use of the defendant's personal name was not an excuse or defense.
If you are naming a business or product, consider visiting with a trademark attorney to discuss the strengths and weaknesses of the proposed name. And if you want to use your personal name, do not assume that you are free to do so simply because it is your personal name.
