Tricky Trademarks: RUN DMC and the $50 Million Trademark Dispute

On December 29, 2016, Darryl McDaniels, the founder of RUN-DMC, one of the most famous music groups in history known for pioneering mainstream hip-hop, filed a $50 Million suit via RUN-DMC Brand LLC in the Southern District of New York. The named defendants include corporate giants Amazon and Walmart along with several other companies and 20 John Does. The group is alleging trademark infringement, trademark dilution, and unfair competition relying on both state and federal law for its claims. 

In its 24 page complaint, RUN-DMC indicates that the RUN-DMC Brand has "produced revenue in excess of $100 Million from the intellectual property associated with the trademark "RUN-DMC" since its inception in 1980's" through its sale of music, merchandising, music publishing, concerts and endorsement deals. The complaint goes on to allege that Amazon, Walmart and the other defendants are "advertising, selling, manufacturing, promoting and distributing multiple products claiming to be RUN-DMC styled products." Ultimately, the hip-hop legends are seeking a permanent injunction against the defendants preventing them from further infringing on their mark.  

The Run-Down

RUN-DMC has a registered trademark with the United States Patent & Trademark Office (USPTO) for the "RUN-DMC" design mark that was filed in 2004 and may have some legitimate claims as can be seen by the complaint's reference to numerous items being sold that bear strikingly similar Run-DMC-esque designs. To prevail on its claims, the group will likely attempt to make several showings:

Infringement

As to its infringement claim, it will attempt to show that (1) the group has a trademark that they are utilizing in commerce; (2) that the use of the mark has priority over the alleged infringer's use; and (3) that a likelihood of confusion exists as to the source of the products in question based on the alleged infringer's use of the mark.

Dilution  

Trademark dilution is legal speak for the alleged change or potential change in public perception of a famous mark when an alleged infringer uses a mark that is confusingly similar, causing an undesired association between the two marks. Here, RUN-DMC will attempt to show that the listed defendant's unauthorized use of their trademark in some way altered, or is likely to alter, the perception of their brand and will rely on several factors traditionally relied on by federal courts to do so.

Unfair Competition

Lastly, as to its unfair competition claims, the group will attempt to show that there is actual confusion between the alleged infringer's use of the RUN-DMC mark, that a likelihood of confusion in the marketplace exists, and that the use of the RUN-DMC mark was done in bad faith or intentionally. 

The Takeaway

The allegedly unauthorized use of RUN-DMC's trademark, albeit a famous one, is something that can happen to everyday individuals, entrepreneurs, bloggers, small businesses, and pretty much anyone with a brand. The first step to protecting your brand is to assert dominion over your brand, and to do this, a federal trademark is a crucial step. Without a federal registration, RUN-DMC would have a significantly weaker case against the corporate giants allegedly infringing on their works famous marks. While it remains to be seen how this case will play out, it's a resounding reminder of the importance of protecting your own brand and the need for a federal trademark. 

Protect Yourself

It would be very fitting for "It's Tricky" to be played through loud speakers during the court proceedings. "This speech is my recital, I think it's very vital" almost directly applies to the seriousness of protecting your brand. So in all seriousness, if you have a mark that identifies and embodies the essence of your brand and your business, you need to protect it. Obtaining a federal trademark registration is essential to this protection and enforcing the rights that come along with it. Give us a call today to trademark keep your brand in check. 

Image Courtesy of wikimedia.org

Hawkins Law Offices, LLC is an intellectual property law firm specializing in the protection, maintenance, and monetization of its client's trademarks. We are dedicated to representing creators. If you have any questions regarding this article or would like to speak with an experienced trademark attorney, please do not hesitate to contact us.

 

 

Derek Hawkins

Hawkins Law Offices, LLC, 757 North Water Street, Suite 300, Milwaukee, WI 53202