Orange County Trademark Attorney® Blog

October 2011 Archives

Microsoft Awarded Trade Dress for Retail Store

October 12, 2011,

microsoft-building.jpgOrange County - Microsoft has recently been awarded trade dress protection for the interior layout of a high tech retail store. The USPTO granted Trademark Registration 4,036,534 which covers the design of a retail store with "four curved tabletops at the front and rear side walls" along with a "rectangular band displaying changing video images on the walls." The trademark covers retail stores that sell computers, computer accessories, cell phones, video games, books, backpacks, and even apparel.

Trade dress protection granted by the USPTO can apply to the overall appearance of an article, product, or as in this case the interior or exterior of a retail store or service center. Trade dress is awarded to distinctive aesthetic designs that serve no functional purpose, as functional designs are covered under patent law. Like a trademark for a logo or brand name, trade dress should create an association in the minds of the consumers linking the source of the product or service to the aesthetic appearance or design of the retail store.

Competitor Apple has experienced vast success with its Apple stores, which allow it to debut new products, promote brand awareness, and allow consumers the opportunity to test products before purchase. The stores not only sell products to consumers, but serve as promotional tools. With 357 locations worldwide, Apple has received considerable publicity regarding its retail stores, including architectural awards. As Microsoft expands its product line, it is hoping for a similar response to its retail stores.

Microsoft, developers of the Windows Operating System, Windows Phone, and the Xbox 360, plan to open 75 retail store locations nationwide. Microsoft has several retail stores currently in operation and hopes to create a recognizable and enjoyable consumer experience utilizing its newly protected trade dress.

Microsoft has recently made significant strides in the fight to acquire a larger share of the smartphone and tablet market. Microsoft and Samsung have recently agreed to cross-license patents to develop products such as the Windows Phone, Android Smartphones, and tablets. In addition, Microsoft and Finnish cellphone makers Nokia have partnered up to develop new smartphone products. Microsoft hopes these retail stores will help the software giant compete in the ever-increasing smartphone/tablet market led by Apple, Google, and Amazon, among others.

Excite Worldwide Sued by Pop Star For Attempting to Trademark "Lady Gaga"

October 1, 2011,

makeup.jpgOrange County - Lady Gaga, one of the world's largest pop stars, filed suit in New York State court against Nevada based cosmetics and accessories company, Excite Worldwide, over the rights to her infamous stage name, Lady Gaga.  The lawsuit is in response to attempts by Excite Worldwide to register several trademarks with the USPTO including LADY GAGA and LADY GAGA LG for cosmetic and apparel products such as makeup and jewelry.

Plaintiffs Lady Gaga, suing under her legal name, Stefani Germanotta and her business entity Ate My Heart, Inc., allege that they already own the registered trademark LADY GAGA (No. 3,960,468) for online chat rooms, poster and paper items, musical recordings, and a website.  LADY GAGA is also a registered trademark (No. 3,695,129) owned by Gaga and Ate My Heart, Inc. for apparel items.  The complaint further alleges that Lady Gaga and Ate My Heart have already filed trademark applications for the LADY GAGA and LADY GAGA FAME trademarks for various cosmetics and accessories.

In order to register the trademarks, Excite Worldwide will have to show priority, use in commerce, and distinctiveness.  While the LADY GAGA trademark is likely distinctive, Excite Worldwide may have a difficult time demonstrating that it was the first entity to use the LADY GAGA trademark in commerce.  Stefani Germanotta, on the other hand, has been using the stage name Lady Gaga since about 2006.  Inspired by the Queen song "Radio Ga Ga," Germanotta and Rob Fusari created the name Lady Gaga, which Gaga has been performing under that name since that time.

The individual applications filed by Lady Gaga and Excite Worldwide for the trademark LADY GAGA to be used in conjunction with cosmetics and accessories seem to be in direct conflict.  The USPTO's decision regarding the applications will likely hinge on priority, or which entity began using the LADY GAGA mark first.  It is unclear whether Excite Worldwide has already been using the LADY GAGA trademark in commerce.

Meanwhile, the New York State action depends on whether plaintiffs can show that use of the LADY GAGA trademark amounts to a false designation of origin likely to cause customer confusion.  In the state complaint, plaintiffs request a permanent injunction barring defendant Excite Worldwide from using the name in commerce and from prosecuting the trademark application before the USPTO.  Plaintiffs also seek punitive damages and attorney's fees.