Taylor Swift's affinity for her lucky number 13 is no secret, so it's no surprise that she attempted to use LUCKY 13 as a mark. Two years ago, Swift began marketing and selling clothing and accessories under the mark LUCKY 13. When selecting marks, individuals and companies often choose words, phrases, graphics, or numbers that have some sort of personal meaning. However, as Swift found out last week, just because LUCKY 13 means something to her does not necessarily mean she can use it freely.
Swift knew she was in trouble last week when Blue Sphere, Inc., a California-based clothing company, and Robert Kloetzly filed a lawsuit in federal court in California, alleging trademark infringment, unfair competition, and dilution. Kloetzly owns federal trademark registrations for the mark LUCKY 13 for use on or in connection with a variety of goods including clothing. Kloetzly and his company have been marketing clothing and accessories to what he describes as a "rock n roll crowd" since 1991, long before Swift. To get an idea of their marketing scheme, check out this screenshot from lucky13.com.
Kloetzly is particluarly perturbed because he feels Swift is marketing her brand to his target audience. He has described her as a woman who "likes fast cars and men who drive them inappropriately." The complaint also states that Swift's video for "I Knew You Were Trouble" could be an ad for Kloetzly's company since it "depicts stylish attractive, tattooed individuals in provocative situations." We will let you be the judge, but we Trademarkologists tend to agree:
Swift may be strumming her guitar asking Kloetzly why he has to be so mean, but this one is pretty cut and dry. Kloetzy has an incontestible federal registration for LUCKY 13 for use on clothing, and Swift commenced use of an identical mark on identical goods nearly twenty years later. The case has already been referred to alternative dispute resolution, so we anticipate we will see a resolution in the near future.
What's the take home here? When selecting a mark, it is best to have a full availability search conducted to ensure that your mark is available and not already in use by a third party. Once you have selected your mark, file a trademark application to protect your rights in the mark and put others on notice that you are claiming rights in the mark. When in doubt, seek assistance from one of your friendly Trademarkologists.
The lawyers at Trademarkology provide online trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to begin the process of protecting your brand name with a federally registered trademark.