Fordham Intellectual Property, Media & Entertainment Law Journal
IPLJ Article Permalink
When Madonna rose to international superstardom with her 1985 hit “Material Girl,” from her sophomore studio album, ‘Like a Virgin,’ the song title soon became synonymous with the artist. Decades later, she has collaborated with daughter Lourdes Leon to create a juniors fashion line cleverly named “Material Girl.” The clothing line, released exclusively to Macy’s just last month, has stirred media attention for its risqué advertising campaign and, more recently, for a legal battle over its famous name.
LA Triumph, a California corporation, filed suit for trademark infringement against Madonna and Material Girl Brand, LLC (“MGB”) on August 19, 2010 in U.S. District Court for the Central District of California. LA Triumph is the successor in interest of OC Mercantile Corporation, a company issued a state law trademark by the State of California for the name “Material Girl” in 1997. The complaint states that the companies have since been selling clothing under this mark nationwide through retailers such as Nordstrom and Ross. MGB filed a federal “intent to use” trademark application on December 4, 2009 with the United States Patent & Trademark Office (“USPTO”) for the use of the Material Girl mark, and the application is currently pending. A quick online search reveals that neither OC Mercantile nor LA Triumph have registered their marks with the USPTO.
Common law trademark rights can be acquired through substantial use of the mark in commerce. However, federal registration of a mark is advantageous because it gives constructive notice to the public of a claim of ownership1 in the mark, and allows for only slight sales to establish trademark rights.2
Irrespective of the public association with the name, or any copyrights in Madonna’s song, “Material Girl,” which can be easily searched through the United States Copyright Office, if Madonna has not sold products under the “Material Girl” name, she will have failed to reserve priority in the mark and no Trademark rights will have been acquired. However, despite its claim of priority, LA Triumph is concerned that the superior resources and commercial advertising involved in Madonna’s line may threaten to overwhelm the significantly smaller senior company and injure its reputation and brand quality.
Both “Material Girl” clothing lines are targeted toward juniors and are marketed in a similar price range to similar retailers. If LA Triumph can show that it has reserved priority in the “Material Girl” trademark through its sales, the similarities of the two lines weigh in favor of a finding of likelihood of confusion in the marketplace.
LA Triumph is seeking a declaratory judgment recognizing it as the sole rightful owner of the mark with respect to clothing and precluding Madonna from the right to use the name on her line. The Company is also seeking an order to deny Madonna’s trademark application. LA Triumph further seeks to recover any and all profits generated through Madonna’s use of the mark.
As of yet, there has been no official response from Madonna’s camp. We’ll have to stay tuned to see whether this material girl can remain the “Material Girl” in the fashion world.
Click here to read the full complaint.
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1 15 U.S.C § 1072.
2 15 U.S.C. § 1051(a) (2006). See also Zazu Designs v. L’Oreal, S.A., 979 F.2d 499 (7th Cir. 1992).
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1 15 U.S.C § 1072.
2 15 U.S.C. § 1051(a) (2006). See also Zazu Designs v. L’Oreal, S.A., 979 F.2d 499 (7th Cir. 1992).
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