OK, I think I am a little obsessed with the Vice vs. Vice Versa thing and the pitchforks that are coming out against Vice media (not to mention that it is possible we don’t have all the information). I borrowed this from Steve Miller, a commenter on the Huffington Post boards… who was of course, slammed by other internet commenters for bringing the legal issues up. I feel for ViceVersa and their situation, but would like to look objectively at the law. I would also like to explain why their case is in a different ballpark then mine.
Steve Miller · San Diego, California
Courts have generally looked at the following eight factors on trademark disputes:
1. the similarity in the overall impression created by the two marks (including the marks’ look, phonetic similarities, and underlying meanings);
2. the similarities of the goods and services involved (including an examination of the marketing channels for the goods);
3.the strength of the plaintiff’s mark;
4.any evidence of actual confusion by consumers;
5.the intent of the defendant in adopting its mark;
6.the physical proximity of the goods in the retail marketplace;
7.the degree of care likely to be exercised by the consumer; and
8.the likelihood of expansion of the product lines.
I can sort of see Vice’s point. They are both connected to music (Vice has a record label.) If the band got huge and started marketing stuff, it could get confusing. If you don’t protect a trademark from the onset, you lose your exclusive right to use it.
I personally do feel there is a similarity between the two logos (which can be easily fixed).
There are similarities between the goods and services, as Vice has a record label (Although if they were smart, they would sign ViceVersa… they are a great band and it would be the feel good ending everyone is secretly hoping for).
The Plainiff’s mark is strong and has been used in commerce.
At this stage of the game, there is no confusion by consumers, but if ViceVersa were to be signed by a competitor..(which COULD happen), it would be an issue.
I think it’s fair to say ViceVersa had no intention to steal Vice’s mark. The black and white logo create similarities.. but it is by no means a rip-off.
Physical proximity is tricky… while ViceVersa is LA based, music travels global, as does media. I do believe their sound could compete with artists signed to Vice’s roster.
At this stage in the game, I do believe consumers know the difference (which could change with expansion.
Judging by the production of ViceVersa’s music video and the fact they have over 150 shows under their belt… this is band that could absolutely expand. They have a great sound and seem to play packed rooms at times. The fact that they are even applying for a Trademark shows that they are serious as a band and a business.
Again, my personal opinion is that they could consider keeping the name but changing the logo. Or rebranding, All that being said… changing their name for the long haul may not be the worst thing in the world, as upon research, they are not as “searchable” as they could/should be… as there are a ton of bands and musical acts old and new with the name Vice Versa.
Comparing it to my case.. my case was much different because there was no actual legitimacy in the $10,000,000 lawsuit against me. The Plaintiff had no history with the two band names I was sued for (“Funhouse and Reservoir Dogs”), I never actually performed under Reservoir Dogs and the Funhouse Trademark according to Justia was applied for the day after the cease and desist letter was sent to my house. Also who needs two different Trademarks for one band? Also where Vice has a brand and intellectual property at stake.. a P!NK Tribute Band is just a scaled down replica of the real thing. They exist all over the world and can’t not be claimed as intellectual property under any circumstances. The case against me was also listed as a contract dispute.. but had no contract. bSo there you have it. Much thanks to ViceVersa for being great sports about my three part series on their situation with Vice.