IP Law Daily, TRADEMARK NEWS: Gospel music TV show producer accuses high school of infringing SINGSATION name, (Dec 7, 2015)

By Thomas Long, J.D.

The producer of the gospel music and variety television show “Singsation” has filed a trademark infringement against a Nebraska public high school district for sponsoring and holding an annual show choir performance and competition with the same name. The complaint was filed in the federal district court in Omaha (Willie Wilson Productions, Inc. v. Millard Public School District, December 3, 2015).

Matteson, Illinois-based Willie Wilson Productions, Inc., asserts ownership of the registered mark SINGSATION, for entertainment services. The registered word-and-design mark consists of a stylized rendering of the word “Singsation!” over a musical staff, with the “S” made to resemble an altered treble clef and the rest of the letters appearing in a staggered formation like musical notes. The registration was issued on November 26, 1991, and has achieved incontestable status.

According to the complaint, Willie Wilson has been engaged in the televised broadcast of a musical and variety show called “Singsation” since 1989. The SINGSATION brand name allegedly is well-known and famous in the Chicago area and throughout the United States and internationally.

Millard Public School District–a high school district in Omaha—is accused of using a word-and-design mark featuring the word “SINGSATION” surrounded by two cartoonish musical notes with arms, legs, and faces. The complaint states that the school district has used the mark to promote vocal and musical performances and recordings thereof, including an annual choir performance and competition that competes directly with Willie Wilson’s business. Willie Wilson asserts that the school district has intentionally adopted the mark to exploit the goodwill and reputation associated with Willie Wilson’s TV show.

Willie Wilson’s counsel advised the school district on November 3, 2014, that the district’s use of SINGSATION was infringing. Despite written assurances that it would stop using the mark, the district allegedly has continued to use it.

The complaint includes claims for trademark infringement in violation of 15 U.S.C. §1114, unfair competition in violation of 15 U.S.C. §1125(a), violation of the Nebraska Uniform Deceptive Trade Practices Act, violation of the Nebraska Consumer Protection Act, and common-law unfair competition. Willie Wilson is seeking injunctive relief; an order requiring the district to turn over infringing advertisements, promotional materials, and merchandise bearing the SINGSATION mark, or a confusingly similar mark, for destruction; and monetary relief, including an accounting of the district’s profits derived from its infringement, exemplary damages, and attorney fees.

The case is No. 8:15-cv-437.

Attorneys: Heidi A. Guttau-Fox (Baird Holm LLP) for Willie Wilson Productions, Inc.

Companies: Willie Wilson Productions, Inc.; Millard Public School District

News: Trademark NebraskaNews