In the trademark sense, is Lady Gaga famous for clothing? That is a question the Trademark Trial and Appeal Board (the “Board”) sought to answer in the trademark opposition of Ate My Heart, Inc. v. Ga Ga Jeans Limited.
Stefani Germanotta, popularly known as Lady Gaga, is a world-renowned singer, songwriter, actress, and public persona. Time magazine placed her on its All-Time 100 Fashion Icons List, stating that “Lady Gaga is just as notorious for her outrageous style as she is for her pop hits. . . . Gaga has partnered with brands like Giorgio Armani on tour outfits, as well as Polaroid, and even pens a fashion column for V Magazine.”
Ate My Heart, Inc., the owner of the mark LADY GAGA for clothing, is a company that handles business related to Ms. Germanotta. Ate My Heart sought to oppose a trademark application by Ga Ga Jeans for the mark GAGA JEANS for jeans (with JEANS disclaimed).
As part of its opposition, Ate My Heart alleged that the LADY GAGA mark was famous and that there was a likelihood of dilution based on the GAGA JEANS mark. That is, registration of the mark GAGA JEANS is likely to reduce the public’s perception of the distinctiveness of the LADY GAGA mark.
A finding of fame is desirable for trademark owners because it provides a broad scope of protection to a mark, and reflects extensive public recognition and renown. As such, a party asserting fame must clearly prove it. In support of its claim that LADY GAGA should be considered a famous source indicator for clothing, Ate My Heart pointed to the inherent distinctiveness of the LADY GAGA mark, the fame of Lady Gaga as a performer, her “influence in the world of fashion,” use of this mark in connection with clothing since 2008, and sales, marketing and promotion.
Indeed, the Board agreed that “Lady Gaga the performer undeniably qualifies as famous.” The Board acknowledged that the trial record contains “considerable evidence regarding Lady Gaga’s success in the music business, including substantial musical recording and concert ticket sales, social media presence, and industry awards and other media recognition.”
But still, the Board found this was not enough. The Board concluded that Ate My Heart had not proven the mark LADY GAGA is famous for clothing. This is because Ate My Heart was required to show that the LADY GAGA mark is a famous source indicator for clothing, not just general fame.
The Board clarified that fame of the performer does not translate directly to fame of the mark for clothing goods. This distinction was highlighted by the trademark survey Ate My Heart conducted in support of its case. An independent survey expert conducted a consumer survey asking “who makes or puts out the GAGA JEANS jeans,” with most responses identifying Lady Gaga as the source or sponsor. However, the responses reflected mere guesses based on general recognition of the performer, rather than brand recognition of the mark for clothing. For example, such responses indicated:
- “The use of ‘Gaga’ automatically made me think of the celebrity,”
- “Because, it is ‘Gaga Jeans’ but I’m not even sure she has a clothing line,” and
- “I’m just guessing because of the name.”
The Board also found that Ate My Heart’s sales and advertising expenditures for clothing were “not extraordinary,” and there was no evidence to show how its revenue and marketing figures compared to competitors in the industry.
Thus, while the Board found that the LADY GAGA mark was a strong mark because of its recognition, the recognition did not rise to the level of fame for clothing goods.
The proceeding is Opposition No. 91205110 (March 30, 2016).