Opposites attract: Vice and Virtue in trademark battle

Vice Media has filed a trademark claim against a marketing company for allegedly “misappropriating” a name that it uses for its advertising company.

In a complaint filed at the US District Court for the Middle District of Georgia, Macon Division, Vice Media claimed that Virtue Marketing has caused “irreparable harm” to its advertising company, Virtue Worldwide, by using the phrase ‘Virtue’.

According to the complaint, filed last week (May 29), Vice set up Virtue Worldwide in 2006 and named it so that it would “play off the Vice name”.

But the media company, which owns Vice magazine, only became aware of Virtue Marketing’s existence after it filed two trademark applications at the US Patent and Trademark Office (USPTO) in January.

One application covered the word mark ‘Virtue Marketing’ and the other was to protect the logo of the company. Both covered advertising services. In its application, Virtue Marketing claimed the name was first used in commerce in 2012.

After discovering the applications, Vice sent a cease-and-desist letter to Virtue Marketing asking it to stop using the name and to withdraw the applications.

But Virtue Marketing refused. Both parties then exchanged several letters concerning the issue, but were unable to resolve the dispute.

Vice applied for its own trademark for ‘Virtue Worldwide’ at the USPTO on March 24.

It was published for opposition on March 17 and less than a week later Virtue Marketing opposed the application.

In the lawsuit, Vice claimed that Virtue Marketing “misappropriated and exploited the goodwill and unique reputation of the Virtue name and mark”.

The media company added that if Virtue Marketing’s conduct is left “unchecked”, it will “continue to cause irreparable damage to the reputation and goodwill associated with the Virtue mark”.

Neither Vice nor Virtue Marketing had responded to a request for comment at the time of publication.