The number 13 is clearly Taylor Swift’s favorite number, and it seems for good reason. The twenty-four year old, multiple Grammy-award winner recently told E! News, “I was born on the 13th. I turned 13 on Friday the 13th. My first album went gold in 13 weeks. My first No. 1 song had a 13 second intro. Every time I’ve won an award I’ve been seated in either the 13th seat, the 13th row, the 13th section, or row M, which is the 13th letter.” So, it’s no surprise that when Swift started her own clothing line in 2012, she did so under the trademark LUCKY 13.
Unfortunately for the songstress, a company by the name of Blue Sphere, Inc. owns multiple U.S. trademark registrations for LUCKY 13 for a number of consumer goods, including clothing, jewelry, bags, and purses. Blue Sphere has filed suit against Taylor Swift in the Central District of California, claiming that a green St. Patrick’s Day themed “Lucky 13” t-shirt sold by Ms. Swift infringes on its trademark. The shirt is no longer for sale and has been removed from Taylor’s website, but if you have a Pinterest account, you can see it here. The suit alleges that Taylor’s LUCKY 13 mark is so similar to Blue Sphere’s registered mark that consumers may confuse one for the other. Blue Sphere asserts that both products are sold to the same type of consumer, through the same distribution channels, and at a similar price point.
Every federal court uses slightly different factors to determine whether a particular trademark is confusingly similar to an existing mark, but the federal district court in California follows those set out in the case of In re E.I. du Pont de Nemours & Co., and believe it or not, there are 13 of them. You can find the full list here, but the two factors considered to be the most critical in the determination of likelihood of confusion are:
- The degree of similarity between the marks, including visual appearance, sound, connotation, commercial impression, and meaning, and
- The relatedness of the goods and services.
Taylor Swift responded to the suit, stating in her answer that there could be no way that the t-shirt in question could have been mistaken for a Blue Sphere product. Swift pointed out that Blue Sphere markets itself as a retailer for those with true “American Rockabilly Pride,” with products that feature skulls, tattoos, and women in bikinis. On the other hand, Taylor’s t-shirt is green and bears a shamrock, the words “Lucky 13,” and Taylor’s signature. Ms. Swift’s legal team contends that it would be impossible for a shirt with Taylor’s signature across the front to be confused with any of Blue Sphere’s LUCKY 13 apparel.
I’m trademark attorney Morris Turek. If you have questions regarding the registration of your trademark, or need assistance responding to a challenge filed against your trademark, please feel free to give me a call at (314) 749-4059 or send me an email at firstname.lastname@example.org.