IP Law Daily, TRADEMARK NEWS: GOOSE band sues another musical group with same name, (Mar 13, 2023)

By Jonathan Anderson

The lawsuit seeks damages for willful infringement and cancellation of defendant’s trademark registrations.

On March 5, 2023, a company affiliated with the Belgian band Goose filed a trademark infringement lawsuit against another musical group with the same name. Plaintiff alleges that its use of the GOOSE trademark predates defendant’s use of the mark for substantially similar goods and services, and that defendant’s use of the mark creates confusion. The complaint, filed in the U.S. District Court for the Central District of California, advances four causes of action, namely false designation of origin, California common law trademark infringement, unfair competition, and cancellation of federal trademark registration (On Repeat BV v. Goose, LLC, March 5, 2023).

Background. Plaintiff, On Repeat BV, is a corporation that controls the rights and interests of the Belgian band named GOOSE. The company advertises, sells, and distributes audio and video recordings of the band and provides other entertainment services. Defendant, Goose, LLC, is a Connecticut company that also advertises, sells, and distributes audio and video recordings under the GOOSE name.

Plaintiff alleges that its use of the GOOSE trademark predates defendant’s use of the mark for substantially similar goods and services. According to the complaint, the Belgian band Goose was formed in 2000, released its first single in 2002, and released a debut album in 2006, followed by subsequent releases of audio and video recordings throughout the world in 2010, 2012, 2016, 2018, and 2022. Plaintiff alleges that defendant has been playing shows and releasing recordings since approximately 2016.

Claims. The complaint advances four causes of action: (1) false designation of origin; (2) California common law trademark infringement; (3) unfair competition; and (4) cancellation of federal trademark registration.

False designation of origin. First, plaintiff alleges that defendant’s actions are “likely to cause and actually cause confusion or mistake between plaintiff’s products, services, and commercial activities and those of defendant, and thus constitute common law trademark infringement, false designation of origin, and unfair competition in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. 11 § 1125(a)(1)(A).” Plaintiff further alleges that defendant’s misconduct is willful.

California common law trademark infringement. Second, plaintiff alleges that defendant’s infringing activities constitute common law infringement of plaintiff’s GOOSE trademark. According to the complaint, defendant “has been and continues to infringe on plaintiff’s trademark rights with full knowledge of or reckless disregard for plaintiff’s common law rights.”

Unfair competition. Third, the complaint alleges that defendant’s appropriation and use of the GOOSE trademark and its associated goodwill and reputation constitute unfair competition in violation of Cal. Bus. & Prof. Code, § 17200 et seq.

Cancellation of federal trademark registration. Fourth, plaintiff seeks refusal of registration or cancellation of defendant’s federal trademark registrations for the word GOOSE and for a design mark comprising the word GOOSE. Defendant applied for federal trademark registrations in its name for the word mark GOOSE and for a design mark incorporating the word GOOSE, which were issued in 2020 and 2022 respectively under U.S. serial numbers 88594816 and 90181496. Plaintiff alleges that defendant is not and was not at the time of filing its applications for registration, the rightful owner of the registered marks.

Relief requested. The complaint asks the court to enjoin defendant from using plaintiff’s GOOSE mark, require defendant to remove the mark from the internet, order the defendant to provide an accounting of all revenues received from use of the GOOSE mark, and require defendant to pay such revenues to plaintiff. The complaint also seeks actual damages and prejudgment interest.

The Case is No. 2:23-cv-01631.

Attorneys: Inge De Bruyn (Modo Law) for On Repeat BV.

Companies: On Repeat BV; Goose, LLC

News: Trademark CaliforniaNews