Madonna was recently sued by cosmetics company, Hard Candy for infringing on its trademark by attempting to create and license fitness clubs and clothing with the name Hard Candy. Named in the suit are Madonna, her manager Guy Oseary, MGHCandy and Epic Rights.
image via www.hardcandyfitness.com
Hard Candy is a cosmetics company that has been around since the mid-90’s when it became popular with its fun and quirky nail polish colors. Hard Candy is claiming that it has held a trademark over the name “Hard Candy” since 1996 in the area of cosmetics and has licensed the name for other products including clothing and accessories since 2009.
Hard Candy Fitness filed an intent-to-use trademark with the U.S. Patent and Trademark Office, for athletic apparely, but the USPTO denied the application. The complaint claims that Hard Candy Fitness has been promoting their products, including apparel, with the name Hard Candy and are attempting to license the clubs in the United States.
Under trademark law, typically two different entities can trademark the same name, provided that they are trademarked within different classes of goods. In this case, however, Hard Candy holds the trademark in cosmetics, apparel, and other accessories. Also, under trademark law, if a mark is deemed “famous,” meaning recognizable by most consumers, the owner of the trademark can prevent others from using the name in any other classes of goods.
CHANEL recently did this by suing and winning the lawsuit against a woman who owned a salon called Chanel’s Salon. The rationale behind this is that when a trademark becomes so well-known that its easily recognized by the average consumer, having two companies use the same mark would then confuse the consumer about the origin of the product or service.
Hard Candy is seeking an injunction and punitive damages for infringement, dilution and unfair competition. Madonna and the other defendants have yet to respond to the complaint.