When Pink sang, “I’m gonna start a fight,” in her song “So What,” no one thought she meant a trademark opposition, but maybe she did.
In April, Pink’s company Lefty Paw Print filed a notice of opposition with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) challenging an application by Pharrell Williams’ company PW IP Holdings, LLC to register P.INC for retail services, talent agency services, concert promotion, and more based on Lefty Paw Print prior trademark registrations for PINK for good and services including sound recordings and entertainment services..
Who else is involved?
In addition to Pink’s challenge, Victoria’s Secret also filed an opposition to Pharrell’s application not long before the opposition by Pink. The VS opposition claims prior rights in its VICTORIA’S SECRET PINK and PINK marks for clothing, retail services, and more.
What’s the case about?
Pink – also known by her birth name Alecia Moore – is probably concerned by the services in Pharrell’s application related to music and entertainment. Victoria’s Secret, on the other hand, is likely troubled by the services relating to clothing sales.
Chances are, both companies also have their eyes on what are known as related goods and services. To win an opposition and prevent registration, an opposer must show a likelihood of confusion. The TTAB will consider multiple factors to determine whether consumers are likely to believe that the new trademark is associated with the opposer’s earlier mark. One of these factors is the relatedness of goods and services. Even very similar or identical marks could fail this test if the goods are not similar. Think DOVE soap and DOVE chocolate or DELTA airline and DELTA faucets.
In the current case, it should be simple for both VS and Pink to prove that Pharrell’s services are related to their goods and services, because both offer goods and services that go beyond what is covered by their registrations. For example, the Victoria’s Secret fashion show, which is returning in 2024 for the first time since 2018, often features big-name musical acts. And Pink sells concert t-shirts and other clothing.
What’s next?
Both the Victoria’s Secret and Pink oppositions are now suspended so that the parties can negotiate potential settlement. Settlement is common in oppositions. Parties often negotiate restrictions on the use of potentially-conflicting marks to avoid consumer confusion. This could include restricting the types of goods offered and/or covered by the registration.
Arguably, Pink and Victoria’s Secret PINK marks already coexist with other PINK marks. For example, Pink overcame a citation to PINK FLOYD and Victoria’s Secret faced various “pink”-formative applications and registrations. In other words, there may already be a lot of pink co-existence, both on the register and in the marketplace.
Pharrell is probably hoping there is room for one more PINK mark.