Coachella’s 2018 Music Festival wrapped up last weekend a couple of hours outside of Los Angeles. The event can be loosely compared to this generation’s Woodstock in its extensive list of musical guests but also in its cultural impact.
This year’s celebrity-studded event featured awe-inspiring feats of performance by Beyonce and other memorable moments, but Coachella’s reach goes far beyond its music. Coachella has become a pop-culture staple that has permeated beyond just Los Angeles and California, and is known throughout the world. And with that, of course, comes trademark issues.
When YouTube rose to prominence, a host of other video and music sites began using “Tube” in their names. When Facebook began dominating the social network space, companies scrambled to develop “-book” formative brands. Similarly, Instagram continues to struggle with other companies using “Insta-” for a host of other services. Many of these attempts to use names similar to these large and and popular companies were met with cease and desist letters.
Trademark law is about preventing consumer confusion and protecting the strength of a brand. The cornerstone to analyzing whether the use of a mark is infringing is whether relevant consumers are likely to be confused by the use of a trademark by a company unrelated to the original trademark owner. But what are the limits? As Coachella continues to grow, recent disputes shine a light on the difficulties and limits of trademark protection.
As the Los Angeles Times reported recently, Goldenvoice, the owners of the COACHELLA trademark is not shy when it comes to enforcing its trademark ‘Coachella’ – it has filed trademark lawsuits against other companies who wish to host festivals whose marketing names end in ‘chella’.
Can a trademark protect a geographic location such as Los Angeles or Coachella?
One important question for many outside of the Los Angeles-area is, “Where does the name COACHELLA come from?”
The festival takes place in Coachella, California.
In order to gain trademark rights in a known geographic name, the trademark owner must show “acquired distinctiveness.” Acquired distinctiveness means that the trademark owner must show that when consumers encounter the trademark, that they associate the trademark with one company (or “source”) as opposed the origin of the product. For example, if consumers saw the words “Los Angeles Beer Company” for beer, they might believe that it was merely information about where the beer is from, not a particular brand of beer. However, a widely-known brand like Brooklyn Brewery from Brooklyn and Red Hook Brewery from the Red Hook neighborhood in New York city have been able to establish itself as the source of specific beers, not just a geographic locations.
However, geographic locations will always have limited rights – it would not be able to prevent a clothing company from truthfully saying “we are based in Coachella, California,” but it will prevent a brand from using COACHELLA as the name of their music venue, even if it is in Coachella, California.
How do companies decide how to enforce their trademark rights?
Trademark enforcement is essential for protecting a trademark and it is not just for Los Angeles celebrities looking to protect their brands. Every trademark owner is responsible for enforcing its trademark in the marketplace because the more brands that co-exist with similar names, the weaker the scope of the original trademark owner’s protection. By effectively monitoring the marketplace and the United States Patent and Trademark Office (USPTO) database, a trademark owner can identify potential issues before they cause irreparable harm to the trademark. However, there are limits to trademark protection, and trademark owners should make sure to recognize those limits before sending cease-and-desist letters or filing expensive lawsuits.
For example, Goldenvoice recently reached out to Sean Combs over his planned “Combschella” and Whole Foods over its planned “Wholechella” music and art festivals. Here, Goldenvoice is taking the position that “CHELLA” is exclusive to its festival. Although they were not using the name ‘Coachella’, Goldenvoice probably was compelled to take action when considering the name of the festivals, their locations (both events were set to take place in or near Coachella’s location) and their offerings (both involved music).
Now, just because another individual or organization wants to use the suffix ‘chella’ or even ‘Coachella’ for their product or service does not mean they will be hearing from Goldenvoice attorneys. In order for there to be a legitimate claim that infringement has occurred, there has to be concern that the goods and/or services would cause confusion among consumers. This confusion could lead to an assumption that the goods/services are associated with each other. This is why owners of other U.S. trademark registrations that use the word ‘Coachella’ in their mark may not be concerned about litigation from Goldenvoice.
At the end of the day, acquiring or securing rights in a trademark and properly enforcing these rights is an important component to any business owner’s overall brand strategy. However, there are limitations to what can be claimed as a trademark, and important factors to consider when deciding to actively enforce a mark against a potential infringer. Seeking assistance from an experienced trademark attorney can provide the guidance necessary to make these decisions.