December 6, 2010
Last month a Canadian company filed suit in Minnesota District Court against Madonna over the trademark “Material Girl.” The company, Rwaschberg Holdings, claims that Madonna’s new fragrance (sold under the “Material Girl” label) is sufficiently similar to its own “Materials Girls” mark to cause consumer confusion and seeks a declaration that such use constitutes willful infringement. You can read the entire complaint on Westlaw here (2010 WL 4655198). This is not the first time Madonna has been involved in a trademark dispute over the “Material Girl” label. In a similar complaint last August a California-based clothing company sued her over the “Material Girl” mark, this time in the context of a teenage fashion line. You can read that complaint here (2010 WL 3358809). That litigation is still in the discovery phase.
A relatively simple search in the Federal Trademark Cases database (FIPTM-CS) for infring! /p plural retrieves only 30 results, most of which are not on point. There are, however, a few gems in that search. Perhaps the most interesting result is Perkins v. Apollo Bros (197 F. 476), a case from 1913. In Perkins the court writes:
The name on the plaintiff’s brand is ‘Nubia‘- in the singular number- and the name on the defendant’s is ‘Nubias‘- apparently in the plural. The plaintiff was in the field several years before the defendant, and it seems hardly open to discussion whether the later name resembles the earlier so closely as to infringe. As I think, they are practically identical, and therefore, although the dress and the devices used on the respective packages are dissimilar, nevertheless the name is not at the defendant’s service if the plaintiff has a prior and a better right.
The Perkins case was, however, overturned on appeal; and the appellate decision makes no reference to the plural form of the mark (they reversed because “Nubia” is a geographical name that cannot be registered).
A another interesting case is Horlick’s Malted Milk Corp. v. Horluck’s, Inc. (59 F.2d 13)in which the court stated: “We think that the defendant should be definitely enjoined from using the name ‘Horluck’ in the possessive, i. e., ‘Horluck’s,’ or in the plural, i. e., ‘Horlucks,’ in connection with the sale of malted milk. The use of the possessive is one of the most objectionable features of defendant’s practices, inasmuch as it is the possessive ‘Horlick’s’ with which plaintiff’s product is associated in the mind of the public.” This suggests that a singular, non-plural or non-possessive use would have been permissible and not sufficiently similar, so long as the distinction is viable in the public’s mind.
McCarthy has his own list of cases. According to McCarthy, a mark changed by a junior user from singular to plural (or vice verse) is treated as virtually identical to the senior mark. See MCCARTHY § 23:46.25. Callman also references several cases. We simply ran a search for the term “plural” in both databases (MCCARTHY and CALLMAN).