The New York Times today ran an article today about the trademark dispute between rocker Jon Bon Jovi and the maker of an energy drink named MIJOVI. The maker of the drink, The Mijovi Company, is seeking to register the mark MIJOVI for soft drinks, energy drinks, etc. The application was published for opposition on July 3, 07, but Jon Bon Jovi Productions, Inc. filed an extension of time to oppose on August 2, 2007, setting a deadline of October 31, 2007 for JBJ to oppose registration of the mark (although additional extensions of time can be requested).
The dispute has apparently been brewing (no pun intended) for some time. Earlier this year, Bon Jovi’s lawyers sent a letter to Marcos Carrington, the creator of the Mijovi drink and the owner of The Mijovi Company, accusing him of improperly using Bon Jovi’s name to market his product. Supporting Jovi’s position was that Carrington was using “itsmilife” as one of Mijovi’s marketing slogans (which sounds like the title of the Bon Jovi song “It’s My Life”). Bon Jovi’s lawyer, Peter Laird, alleged that the slogan and the name of the drink “constitute a willful and intentional attempt to mislead the public and to associate our client with your product.” Mr. Carrington’s lawyer, James Nichols, responded to Laird’s letter by agreeing to stop using the “itsmilife” slogan, but maintained that Mr. Carrington is within his rights to use the MIJOVI name.
Jon Bon Jovi registered the trademark BON JOVI for his band in 1988 (officially, for entertainment services, namely live performances by a musical group).
In light of this dispute, he now appears to want to corner the market on using the term JOVI. On June 22, 2007, he filed two Section 1(b) intent-to-use applications for JOVI GIRLS and JOVI GEAR, both for clothing. He also filed Section 1(b) application on September 6, 2006 for his own name, JON BON JOVI, for clothing.
But he doesn’t seem to have a problem with the registrations JOVI PAK (orthopedic supports) or JOVI design mark (for pens, pencils, etc.). If Bon Jovi were to have a problem with any pending mark, I would think it would be the Section 1(a) application DOKAJOVI (for entertainment namely, live performances by a musical band) filed June 23, 2007 (a day after Bon Jovi’s clothing marks). I would expect Bon Jovi to oppose registration of this one when it is published for opposition.
One other interesting application is the BON JOVI HOME THEATER SYSTEM applied for by Florida resident named Anthony Bongiovi. No response was ever made to the USPTO’s non-final office action, which required a disclaimer of the terms HOME THEATER SYSTEM, but was silent about the BON JOVI part, even though such would clearly be likely to cause confusion with Bon Jovi’s registered mark. Maybe Bon Jovi’s attorneys got ahold of this guy as well. But this case is a little more clear cut.
Bon Jovi will most likely try to argue a likelihood of confusion under Lanham Act Section 2(d), 15 U.S.C. §1052(d), as grounds for opposing the registration of the MIJOVI mark. In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the following thirteen factors relevant to a determination of likelihood of confusion (the “du Pont” factors):
(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established, likely-to-continue trade channels.
(4) The conditions under which and buyers to whom sales are made (i.e. "impulse" vs. careful, sophisticated purchasing).
(5) The fame of the prior mark (sales, advertising, length of use).
(6) The number and nature of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
(9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).
(10) The market interface between applicant and the owner of a prior mark.
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
(12) The extent of potential confusion, i.e., whether de minimis or substantial.
(13) Any other established fact probative of the effect of use.
Applying the "du Pont" factors to the MIJOVI mark tends to favor a finding of no likelihood of confusion, but it's not exactly a clear-cut case.
The factors favoring MIJOVI:
- The marks are not similar in appearance, sound, and commercial impression and the nature of the goods/services are different (entertainment services versus beverages). The trade channels are different (except for maybe the occasion BON JOVI concert where MIJOVI might also be sold).
- The Bon Jovi mark is not used on a variety of other goods (such as beverages).
The factors favoring Bon Jovi :
- Buyers purchasing the MIJOVI drink are more on the impulse side.
- The BON JOVI mark is very famous.
- Another probative fact -- Bon Jovi may try to argue that Carrington adopted the MIJOVI mark in bad faith – as evidenced by the “itsmilife” marketing slogan; however, without any more evidence, and given the fact that Carrington stopped using the phrase after being notified by Bon Jovi, this may not be enough.
The factors favoring neither side:
- There is no evidence of actual confusion (although given the power of the Bon Jovi name in New Jersey, and with New Jersey being the primary market for MIJOVI, such evidence may be possible to obtain).
- There are only a few other marks that contain the word JOVI, but there are some, and they don’t belong to Bon Jovi.
- There has been no market interface between the two parties (although apparently Carrington and Jon Bon Jovi did have a polite discussion one evening).
- The extent of potential confusion is more than de minimus, but not substantial.
It will be interesting to see how far Bon Jovi is willing to take this dispute. Given Carrington’s investment in this name, he is not likely to abandon the mark just to avoid a possibly lengthy opposition.
Personally, I didn’t even think about Bon Jovi when I saw the name Mijovi and I do not think most consumer would either. What first came to my mind was the famous mark MIDORI for liqueurs. Perhaps Suntory Ltd. would be interested in this dispute.