British boy band One Direction has been taking America by storm in recent weeks, with a response that is reminiscent of the U.K.’s most famous musical export. However, it now appears that a trademark infringement lawsuit may put a damper on the band’s growing success. The problem—another band in the U.S. already calls itself One Direction.
The lawsuit names as defendants Simon Cowell’s record label, Syco Entertainment, and Sony Music. It claims that One Direction (U.K.) is causing consumer confusion and destroying the goodwill of the U.S.-based band of the same name. To support their allegations, the plaintiffs point to One Direction’s (U.K.) recent appearance on NBC’s Today, which accidentally featured music from the U.S. band. The lawsuit seeks an injunction and damages of $1 million.
The lawsuit further maintains that the U.K. band filed a trademark application with the U.S. Patent and Trademark Office before the U.S. tour. As part of the trademark process, it was informed that another band was already using the mark. The matter is currently pending before the Trademark Trial & Appeal Board.
As the Hollywood Reporter notes, other famous bands faced with this issue have changed their names. For instance, Pink Floyd was originally called The Tea Set before discovering a band with the same name. Similarly, The Grateful Dead were originally called The Warlocks, and The Chemical Brothers were originally called The Dust Brothers.
However, given One Direction’s (U.K.) meteoric success, it appears unwilling to abandon the name. It also appears that negotiations between the two sides have failed to reach a resolution out of court.
One Direction (U.K.) recently released the following statement:
“There is a dispute with a local group in California about the ownership of the One Direction name in the US. One Direction’s management tried to resolve the situation amicably when the matter first came to light, but the Californian group has now filed a lawsuit claiming they own the name. One Direction’s lawyers now have no choice but to defend the lawsuit and the band’s right to use their name.”
The Message for Businesses
As this case highlights, your trademark search should extend to any country in which you hope to market your service or product. One Direction (U.K.) should hope its success continues because it may have to expend a significant amount of money to keep its name in the United States.