American clothing retailer Gap is trying to put a stop to the registration of a trademark filed by a member of the 70s and 80s R&B/funk trio, Gap Band. Ronnie Wilson filed an application for GAP BAND in July 2015 for use with two classes of goods/services: (1) “clothing, namely hats, t-shirts, and sweatshirts for sale at live music performances, live music concerts, live music shows and personal appearances” and (2) “entertainment services in the nature of live performances, live music concerts, and personal appearances all by a musical group.” As with all trademark applications, the mark was published to the United States Patent and Trademark Office’s (USPTO) Official Gazette last July to present the public with an opportunity to oppose its registration.
This January, Gap submitted a Notice of Opposition to the Trademark Trial and Appeal Board (TTAB) on the grounds of its priority use of GAP, the likelihood of confusion, and dilution by blurring. Gap took issue with the registration of GAP BAND with a class of goods for clothing because Gap has nearly twenty trademarks registered with the USPTO, including several for its recognizable clothing collections Gap Kids, Baby Gap and Gap Body.
According to the filing, Gap registered THE GAP in 1978 based on a 1969 first use in commerce. Interestingly, the company’s first-use date came after Wilson’s claimed first-use date in his trademark application, which was 1967. Gap argued, however, that Wilson’s group didn’t start using the name “Gap Band” until much later. “Opposer’s GAP Marks are exclusively associated with Opposer and have been used continuously by Opposer since a date prior to any date on which Applicant can rely, based on Opposer’s investigation.”
Gap next argued that its marks and Wilson’s mark are too alike in sound, sight and commercial impression; the company thought the presence of the word “band” contributed to the problem of similarity as well. Gap made the point that it has frequently promoted its products with music in commercials, including appearances by famous musicians. It believed the registration of GAP BAND would falsely lead to the belief by consumers that there was an association between the two.
Gap’s final argument was that the registration of Wilson’s mark would dilute its distinctiveness. Citing Gap, Inc. v. G.A.P. Adventures Inc., a New York district court opinion from 2011, and Gap, LLC v. Gap One Enterprises, LLC, a TTAB proceeding from 2008, Gap asserted that in both matters the company was described as being “famous.” Proof of owning a famous mark is a requirement for succeeding on a dilution claim. U.S. law defines “famous” for the purposes of dilution as a mark that is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner,” and courts will consider a set of factors that are also spelled out in the statute.
Gap has a long history of filing oppositions to trademark applications, including THIGH GAP for wine, MINE THE GAP for a consulting business and ZGAP for arranging beauty contests.
Wilson’s answer to the Notice of Opposition is due in March.
For more information on the trademark registration process, please contact The Fried Firm.