January 7th, 2020
On January 2, 2020, the Goodyear Tire & Rubber Company (“Goodyear”) and the Illinois-based punk rock band, The Pimps, a/k/a The Good Year Pimps (“The Pimps”), entered into a settlement agreement to resolve allegations that The Pimps: (1) had breached a previous settlement agreement entered into between the parties; (2) were infringing on Goodyear’s trademark rights; and (3) had diluted and tarnished the famous GOODYEAR name and mark, the Goodyear winged foot logo and the Goodyear Blimp logo, respectively. This is not the first time that Goodyear has had to use trademark law to prevent The Pimps from using its marks. In 2002, a cease and desist letter was sent to stop The Pimps from using “Goodyear” as part of their band name. Then, in 2007, the parties eventually entered into a settlement agreement after it was learned that The Pimps were continuing to use Goodyear’s trademarks in connection with promoting their performances and in merchandise sales. This settlement agreement was adhered to until 2018, when it was brought to Goodyear’s attention that The Pimps were again using its famous trademarks during performances and to sell merchandise.
How does trademark law prevent a band from using a similar name to that of a tire company?
Trademark Law Basics
Among other things, trademark law protects consumers from brand confusion. Affording brands trademark protection allows consumers to identify the quality of goods and services with the source of those goods and services. If a competitor is offering similar goods and/or services under a similar name, the competitor may be committing trademark infringement. However, if another business is using a similar name, but not offering similar goods and/or services to that of the mark owner, it is possible that the business has not engaged in trademark infringement (i.e., Delta airplanes, Delta faucets, Delta dental insurance, etc.). With respect to the Goodyear name, it would seem that consumers would not be confused by one company selling tires on the one hand, and a band playing punk rock on the other, through use of the same name. However, the important differentiating factor at issue here is that Goodyear owns registered trademarks that have become “famous” within the meaning of the law, which are afforded greater protection than mere ordinary registered trademarks.
In addition to other causes of action, owners of “famous” marks can sue on the basis of trademark dilution. To determine whether a trademark is indeed “famous,” an owner must submit evidence demonstrating that consumers view the subject trademark to be “famous.” Examples of relevant evidence of fame are, inter alia, the amount of money spent on advertising through use of a given mark, the quantity of sales of goods and/or services bearing the mark, the length of time the mark has been used in commerce, and the degree of inherent or acquired distinctiveness. If it is determined that the mark is famous, any use of a similar mark could cause “blurring” or “tarnishment,” and diminish the goodwill associated with the senior mark. Dilution by blurring refers to third parties using a mark which is similar to the famous mark in connection with dissimilar goods and/or services. Dilution by tarnishment, by contrast, occurs when use of a junior mark would negatively impact the reputation of the famous mark in an unwholesome or distasteful manner. With respect to the facts at issue, Goodyear asserted that associating pimps with its famous trademark might result in an unwholesome public perception.
In the context of the dispute at hand, it is important to recognize that a settlement agreement was entered into and that none of the allegations were addressed at trial. How this matter would otherwise have been resolved by a court of law is unclear. We note that trademark litigation can be very expensive and, as such, it is possible that The Pimps entered into this settlement agreement simply because they did not have the finances to continue to fight the deep-pocketed Goodyear.
If you are interested in learning more about this topic, or if you are involved in a trademark dispute, please e-mail us at info @kleinmoynihan.com, or call us at (212) 246-0900.
The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.
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