Eriq Gardner at the Hollywood Reporter, Esq. reports that Madonna has lost the first round trademark battle over the “Material Girl” clothing line as a federal judge refused to dismiss a Los Angeles clothing company’s infringement claim against her.
Last year, Madonna was sued by LA Triumph, which alleged that it has had a registered trademark in “Material Girl” clothing since 1997 (although a search of the USPTO database turned up no results for live, registered marks with that exact name—only “Material Girls,” plural, turned up). Madonna launched a clothing line by the name of “Material Girl” last year with her daughter Lourdes; it currently sells exclusively at Macy’s, a co-defendant in the case, and LA Triumph claims this infringes on its trademark.
Madonna and her lawyers argued that her 1985 hit song “Material Girl” as well as the fact that she if often actually called “The Material Girl” establish her as a “senior user” of the trademark, and that therefore she, not LA Triumph, should hold any rights to the phrase.
But Judge S. James Otero of the Central District of California wasn’t buying it. He ruled that such arguments failed “as a matter of law” as “the singing of a song does not create a trademark.”
Otero also rejected the contention that because Madonna sold clothing items with the phrase on them during the 1980s that this established her intellectual property rights as a “senior user” of “Material Girl.” Judge Otero further found that various merchandise sold at concerts did not establish any rights with regard to clothing specifically.
This case is something of a puzzler: if trademarks are meant to identify the source of goods or services, then shouldn’t the person or company most associated with a mark hold the rights to that mark, in order to avoid consumer confusion—especially if, as here, the one associated with the mark has been using it in commerce (both entertainment services and clothing are USPTO-approved categories of goods and services) for a decade longer than someone else claiming rights to it? And, really: when you hear the words “Material Girl,” whom do you think of first—a clothing company or the woman who single-handedly changed the face of pop music in the 1980s and 90s? In fact, even assuming that LA Triumph’s “Material Girl” clothing is extremely successful…can anyone venture a guess as to why that might be? Standing alone, the phrase isn’t terribly catchy. Standing alongside Madonna, it becomes unforgettable.
Nevertheless, this case is currently scheduled for trial.
More on this story as it unfolds.