When States of Mind Collide: USPTO Rejects MARIJUANAVILLE as Confusingly Similar to MARGARITAVILLE

An applicant sought to register the trademark MARIJUANAVILLE for a variety of types of clothing to be sold in locations that support the legalization of marijuana. Jimmy Buffett’s (the singer’s) company Margaritaville Enterprises, LLC filed an opposition, citing its use of the MARGARITAVILLE mark on a number of products, including clothing.

But in her answer to the opposition, the pro se applicant actually admitted several salient allegations made by Buffet’s company, including the following:

  • Jimmy Buffet, an internationally-famous musician, songwriter, and entertainer, is an owner of Margaritaville’s parent company.
  • Margaritaville is the successor-in-interest to trademarks filed and registered by Jimmy Buffet.
  • Margaritaville provides goods and services associated with Jimmy Buffet and Jimmy Buffet-related themes such as beaches, tropics, leisure activities, and islands.
  • Margaritaville regularly commercializes Jimmy Buffet’s song titles and lyrics as trademarks, notably “Margaritaville.”
  • The MARGARITAVILLE mark is a coined term based on Jimmy Buffet’s famous “Margaritaville” song.
  • Due to the longstanding and widespread use of the MARGARITAVILLE mark, including extensive use of the mark adjacent to Jimmy Buffet’s name, the MARGARITAVILLE mark is strongly associated with Margaritaville and Jimmy Buffet.

 

It was no surprise that the USPTO found that both marks were similar insofar as they each have five syllables, each commence with the same letter string “mar-” and end with the suffix “-ville.” Further, the record showed a public association between the two terms as representing a similar “state of mind” induced by either a cocktail or marijuana. According to the record, the suffix “-ville” is a slang term frequently, combined with other words to denote a “state of being.”

The USPTO ultimately sustained Margaritaville’s opposition and denied registration to MARIJUANAVILLE, concluding that “the overall connotation and commercial impression of the marks is highly similar––a chemically induced mental paradise. The public is likely to perceive Applicant’s mark [MARIJAUNAVILLE] as an extension of Opposer’s lifestyle brand [MARGARITAVILLE]”

 

For further details, see Josh’s post at Wendel Rosen's California Cannabis Law Blog.

 

Josh Cohen chairs the Intellectual Property Litigation Group at Wendel Rosen in Oakland. He counsels business, technology and real estate clients, addressing complex and sophisticated litigation issues.  He represents clients in litigation prevention, mediation, arbitration and trial in state and federal courts.  Josh has litigated disputes regarding trade-secret misappropriation, high-tech product defects, indemnification and warranty, trademark and copyright infringement, licensing, cannabis related IP issues, and employment matters regarding non-compete, non-solicitation, and non-disclosure agreements.

 

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