20 April 2018Copyright

DJ Khaled tries to register TM ‘that already exists’

Music personality DJ Khaled has attempted to register his son’s name as a trademark in spite of the existence of earlier registered rights for the word.

Business Moves Consulting, who claims it is the earlier trademark registrant, shared information regarding the dispute with WIPR earlier this week.

On April 4 DJ Khaled filed three trademarks with the US Patent and Trademark Office (USPTO), all centring on his son’s name: ‘Asahd’, ‘Asahd Khaled’, and ‘Asahd Tuck Khaled’.

All three filings cover a broad range of goods and services including fragrances, baby clothing, music accessories, and a number of foods.

Speaking to WIPR, Business Moves Consulting said it had already filed to register word marks ‘Asahd’ and ‘Asahd Couture’ in July 2017. It also filed to register word mark ‘A.S.A.H.D Couture’ and figurative mark ‘A.S.A.H.D a son and his dad’ with the USPTO in February and April this year respectively.

The marks all cover international class 25, for footwear, accessories, clothing, and games relating to the promotion of a “strong father-son bond”. None of the marks has been opposed, but the USPTO issued a non-final action refusing registration of the 'Asahd' mark on April 16 on the grounds that it may "falsely suggest a connection with Asahd Khaled".

In a separate dispute, Business Moves Consulting filed to register the mark ‘We The Best Lifestyle’ in July 2017 in international class 41, relating to magazine publishing services. DJ Khaled filed a notice of opposition in January 2018 on the grounds of his four prior registered marks for his catchphrase ‘We The Best’.

DJ Khaled claimed Business Moves Consulting “has no magazine publishing services” and asked the USPTO to reject the trademark application.

According to Business Moves Consulting, DJ Khaled’s opposition to the ‘We The Best Lifestyle’ mark is “an attempt to discuss the Asahd trademark”.

In reference to the ‘Asahd’ marks, the company said in order to be successful and profitable in the business world, you “need to own IP”, so it will “defend” its trademarks by filing an opposition on the grounds of its earlier marks.

Business Moves Consulting has also been in contact with the Motion Picture Association of America (MPAA), a trade association which represents Hollywood studios including Walt Disney Studios and Warner Bros.

The company explained that it discovered a short film shared online by DJ Khaled when it was conducting investigations for the ‘We The Best Lifestyle’ dispute. The film’s producers had allegedly stated that it was verified by the MPAA.

Speaking to WIPR, the MPAA confirmed that, on April 17, it sent a letter to DJ Khaled’s counsel regarding the false indication that the video had been rated by the association. According to the letter there was a “violation of MPAA’s trademark and copyright” in the content shared by DJ Khaled.

A spokesperson for DJ Khaled said the music personality is not in any negotiations with Business Moves Consulting. In addition, he added that the film post was “taken down before we ever received any communication from the MPAA”.

The spokesperson said: “We are aware of Business Moves Consulting’s attempts to register Mr Khaled’s son’s name as a trademark, as well as Mr Khaled’s longstanding business name ‘We The Best’, and believe it is completely inappropriate."

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5 February 2018   Media personality DJ Khaled has opposed a consulting firm's attempt to trademark his allegedly signature phrase.