Could you write a legal opinion about Jimmy Buffett, Margaritaville and Marijaunaville without displaying any trace of a sense of humor? The United States Patent and Trademark Office (USPTO) did. The USPTO wrote a 30-page opinion about the singer, who’s backed by the Coral Reefer Band and has created “an island escapism lifestyle,” without a single pun, witticism or joke that might elicit even a smirk, much less a smile.
Rachel Bevis, the 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 company Margaritaville Enterprises, LLC filed an opposition, citing its use of the MARGARITAVILLE mark on a number of products, including clothing.
The USPTO applied the 12 DuPont factors, used for determining the likelihood of confusion between the applicant’s mark [MARIJUANAVILLE] and the existing mark [MARGARITAVILLE].
The USPTO reviewed Buffett’s epic career and his widespread “media and popular culture exposure” and concluded, in a gross understatement, that Margaritaville has established that its mark is “famous.”
Margaritaville enlisted an expert lexicographer and linguistic consultant to state the obvious, that “due to the shared linguistic properties of the two terms Margaritaville and Marijuanaville …are similar and may result in consumer confusion.” Apparently Margaritaville’s money was not well spent as the USPTO refused to rely on such testimony noting that “opinion testimony on the questions of likelihood of confusion is admissible, it is entitled to little or no weight.” With all the groove of a blown flip-flop, the USPTO conducted its own comparison and found:
[B]oth marks are similar insofar as they are comparing the two “single term 14 letter marks comprises of five syllables, each commencing with the same letter string “mar-” and ending with the suffix “-ville.” As to their connotation and commercial impression, the record shows 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 made no mention of the fact that marijuana is a Schedule 1 Controlled Substance and that the USPTO will not register trademarks for actual marijuana use. In fact, the USPTO has registered numerous trademarks for clothing and other goods and services that relate to marijuana or cannabis, so long as the goods and services do not relate directly to the sale of marijuana.
The USPTO sustained Margaritaville’s opposition and denied registration to MARIJUANAVILLE, concluding that “thus, 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]”
One can only hope that after this ordeal, Jimmy Buffett, the applicant, and maybe even the USPTO Judge, were able to chill on a beach somewhere, watchin’ the sun bake and get to their own “states of being.”
[Note: This post also appears on Wendel Rosen’s IP Legal Forum blog.]