American rapper Rick Ross has won a legal dispute over the trade mark MASTERMIND. Ross released his sixth album titled Mastermind in 2014 and he also named his recent tour mastermind. The artist also often refers to himself by the nickname mastermind.
Raul Caiz is a hip-hop artist and producer who owned US trademark registration No. 4366332 for the mark "Mastermind" filed on 24 December 2005, covering video and sound recordings in class 9 and entertainment services in class 41. Caiz also claimed to have used the trade mark for over 17 years.
In November 2015 Caiz filed a lawsuit against Ross and his label, Universal Music Group, alleging trademark infringement. Caiz claimed $2 million dollars in damages as well as an injunction to prevent Ross' further use of the mark. Caiz launched legal action against Ross on the basis that Ross had used his mark and that this would cause confusion in the marketplace.
Ross argued that Caiz should not be given a monopoly on a laudatory term and counterclaimed arguing that the trademark should be cancelled. He also argued that Caiz had failed to use the mark in recent years. Therefore, the trademark could have been vulnerable to cancellation for non-use.
A motion for summary judgement was filed on behalf of Ross in the Central District Court of California. The Federal Judge granted summary judgment and ordered the cancellation of Caiz's trademark. The judge held that the term was used by several musicians and consumers would not automatically connect the mark with Caiz. If a descriptive trade mark has been used for a long period of time it can sometimes obtain a secondary meaning to allow the registration of the mark. However, the judge held that Caiz's trade mark had not been used sufficiently to allow consumers to automatically associate the trademark with him.
Caiz's representative has reportedly said "we feel this is a blow to all registered trademark owners whose marks might be considered descriptive instead of suggestive, especially when the trademark office makes no such determination during the registration process". Caiz will have the chance to appeal the decision and it remains to be seen if he will do so.Posted by: in: EU/International, Trade Marks