VALENTINE’S DAY GREETINGS
There are many active U.S. trademark registrations of marks containing the word LOVE. Perhaps the most famous is registered as a mark in at least 10 classes:
Registration No. 4879320 issued on January 5, 2016, and Registration No. 5094914 issued on December 6, 2016, to Morgan Art Foundation Ltd.
But there may be some procedural pitfalls to enforcing rights in registered marks, even those expressing LOVE. Two such lawsuits were thrown out of court in the past year for lack of jurisdiction.
Brothers and Sisters in Christ, LLC (“BASIC”), based in Missouri, owns a federal registration of LOVE HAPPENS for clothing. It brought an infringement suit in a Missouri federal district court against Zazzle for selling a single “love happens” t-shirt to a Missouri resident who was affiliated with BASIC, and for advertising and selling its goods on a webpage available to those in Missouri and elsewhere. Zazzle is based in California.
The specimen submitted to support Registration No. 5115983 issued to BASIC on January 3, 2017.
The district court dismissed this case on the ground that these facts were insufficient to subject Zazzle to jurisdiction in Missouri. The U.S. Court of Appeals for the Eighth Circuit affirmed.
Business Moves Consulting, Incorporated, a Mississippi corporation located in Louisiana, owns a federal registration of THEEILOVE (in stylized form) for clothing. It brought an infringement suit in a Louisiana federal court against the licensing agent and some licensees of Jackson State University (“University”). Business Moves did not sue the University itself even though the University had been using “Thee I Love” as its alma mater for roughly 80 years, and its licensing agent had licensed it for use on shirts, among other things. The University is located in Mississippi.
The mark shown in Registration No. 5496751 issued to Business Moves Consulting, Incorporated on June 19, 2018. A cancellation petition was filed by Jackson State University on May 12, 2021, and that proceeding is currently suspended.
The district court dismissed this case on the ground that the University was a necessary party, even though the University could not be joined as a party because it has sovereign immunity as an arm of the State of Mississippi. The U.S. Court of Appeals for the Fifth Circuit affirmed.
These cases illustrate that LOVE does not always conquer all. However, these results may be temporary because, among other things, the parties may pursue remedies before the Trademark Trial and Appeal Board, and the merits also may be litigated in different federal courts. If you face a challenge to your trademark interests, we would love to come to your rescue.
For further information, please contact William M. Borchard or your CLL attorney.
Email | 212.790.9290
Bill advises on domestic and international trademark matters at the highest level. His practice consists of counseling clients and handling domestic and international trademark and copyright matters including clearance, registration, proper use, licensing, contested administrative proceedings and infringement claims.