Is owning a trade mark similar to the name of a well-known celebrity a dream or a disaster? This is a question that the people behind GAGA PURE PLATINUM must be asking themselves after Ate My Heart, Inc (AMH) – a company owned by arguably the world’s most famous celebrity right now, Stefani Germanotta (better known as Lady Gaga) – applied to the US Patent and Trademarks Office (USPTO) for cancellation of its trade mark registration.
The rise of celebrities as global brands presents significant challenges for trade mark laws, and vice versa. The system which exists to provide legal protection for the names, logos and other signs used by traders to identify their goods and services works well for traditional merchants and corporations. However, modern global celebrities are radically different from traditional traders in the sheer scope of their brand recognition and value.
Traditional Character of the Trade Mark System
Legal protections for trade marks are limited geographically (i.e. trade mark laws are national or, at best, regional in scope) and with regard to the categories of goods and/or services in respect of which a trade mark is registered. Historically, this system has served trade mark owners and the public perfectly well, for the simple reason that no individual company has had the capacity to produce and market a wide range of disparate goods and services. Trade mark protections covering specific categories of goods or services, obtained in the particular countries in which the owner actually conducts business, have therefore generally been effective.
The system accounts for the practical reality that unrelated companies may operate within different geographical markets, or in different market categories or segments, using similar trade marks, without risk of any significant confusion arising.
Adapting to Famous Brands
The law in many countries also accommodates the fact that some trade marks acquire high levels of recognition, such that consumer confusion may arise if a similar trade mark is used by an unrelated trader in relation to goods or services that are quite different to those covered by an existing registration. Adoption of a famous trade mark such as NIKE for use in relation to goods such as cosmetics or health foods, or services such as personal training or day spas, is likely to cause consumers to assume a connection to the well-known sporting goods company, even if it does not in fact provide these goods or services, and its trade mark registrations do not cover them. The same is probably not true, however, of the use of NIKE as a trade mark in relation to curtains, or provision of legal advice.
Yet global celebrities such as Lady Gaga take this notion of famous brands to a whole new level. The ‘Mother Monster’, as she currently styles herself, is the top Twitterato, with over 26.5 million followers. According to the petition filed by Gaga’s lawyers at the USPTO, since her debut in 2008 she has had eight US top-ten hits, and sold over 23 million albums and 64 million singles worldwide. Time Magazine and Forbes have included Lady Gaga in their annual lists of the most influential people in the world and the most powerful and influential celebrities in the world, respectively. Forbes also placed her at number seven on their annual list of the World’s 100 Most Powerful Women.
The Limits of Trade Marks
For better or worse, along with other uber-celebrities such as Madonna, Jennifer ‘J-Lo’ Lopez, Justin Bieber, Britney Spears, Kim Kardashian, Katy Perry, Beyonce Knowles, David and Victoria Beckham, and Kanye West, the range of products and services to which Lady Gaga could productively lend her name, and a lot of celebrity magic, is almost without limit. Glittery Gaga curtains or carpets might seem unlikely, but are certainly not out of the question!
A traditional view of the role of a trade mark as an indication of origin of particular goods or services within a specific market simply cannot cope with this situation. Attaching the GAGA name to virtually any consumer goods or services, in almost any market, is likely to create an automatic presumption in the minds of consumers that those goods or services are in some way affiliated with, sponsored, approved, or authorised by Lady Gaga. And this is now likely to be the case even for brands which pre-date the Mother Monster’s rise to global fame.
While registering a trade mark may be one component in an overall strategy for managing, building and protecting a brand, it should not be forgotten that strong brands are very much more than just the trade marks which may act as signifiers. It should therefore not be entirely surprising that the registration system does not always align well with the requirements of exceptional brands.
Gaga vs GAGA PURE PLATINUM
As for the dispute between AMH and the people behind GAGA PURE PLATINUM, there is more to this than meets the eye. The little-known New York operation that had held a US federal registration for the GAGA PURE PLATINUM trade mark since 2003 (originally filing in 2001) may have suddenly found itself sitting on a potential gold mine.
The GAGA PURE PLATINUM website claims that the brand was created in 2000 by ‘second generation cosmetics purveyors and sisters’ Cristina Samuels and Jennifer Isaac. However, the domain gagapureplatinum.com was only registered on 11 February 2011, long after Lady Gaga’s rise to fame. And while the trade mark is registered as the words – in principle protecting their use in any form – the manner in which it is actually being used strongly emphasises the word GAGA at the expense of PURE PLATINUM.
The petition for cancellation of the GAGA PURE PLATINUM registration filed by AMH notes that the prior trade mark is preventing registration of the marks LADY GAGA, LADY GAGA FAME and HAUS OF GAGA in relation to various cosmetic products. It further claims that the registration should be cancelled because the GAGA PURE PLATINUM trade mark is allegedly no longer in use. While it is certainly in use now, it is unclear whether it actually remained in use throughout the decade since registration, as claimed by the owner.
Quite aside from the truth of the matter, however, is the potential for damage to the LADY GAGA brand itself as a result of the dispute. Gaga, who has made a point of campaigning against bullying, is now accused of being a bully herself, for ‘suing’ a family business in order to get her own way over the GAGA trade marks, according to email correspondence published by The Village Voice.
It is likely that the facts regarding use of the GAGA PURE PLATINUM, and the validity of its registration, are irrelevant. As a practical matter, in just four years the Fame Monster brand has co-opted for itself the lion’s share of the global reputation associated with the word GAGA. To the extent that the world’s trade mark registers suggest otherwise, they no longer reflect commercial reality.
This reveals real limitations of the trade mark system in the face of global mega-fame, and presents problems for all parties involved. For Lady Gaga, existing rights present potential barriers to registration of her own trade marks, as well as infringement risks. For prior brand owners, the Gaga juggernaut inevitably consumes all existing reputation in its path, possibly destroying years of investment in developing and building a brand.
There is no one ‘right’ solution to this problem, and the laws in different countries deal with it differently. In some jurisdictions, priority is given to the owner of a registered trade mark. In others, the owner of the dominant reputation in the market will prevail. The former approach might be said to favour original brand owners, while the latter is more consumer-oriented.
Ultimately, however, money talks. Lady Gaga will almost certainly get what she wants, and the only question is how much she will have to pay to get it. One thing is for sure – the negotiations could be a real test of her Poker Face!