23 November 2017Trademarks

Are you fur real? Wu-Tang Clan and dog walkers in TM fight

Woof-Tang Clan, self-described as walking the “illest group of dogs in New York City”, has found itself at the centre of a trademark dispute with hip hop group Wu-Tang Clan.

The group of dog walkers sought to register the mark ‘ Woof-Tang Clan’ at the US Patent and Trademark Office in June this year, covering class 45 (dog walking services).

But Robert Diggs, better known by his stage name RZA, the leader and producer of the Wu-Tang Clan, has not taken kindly to the application.

On November 15, a Fross Zelnick Lehrman & Zissu lawyer filed a notice of opposition at the Trademark Trial and Appeal Board, alleging likelihood of confusion, dilution by blurring, and false suggestion of a connection.

Diggs owns the mark ‘Wu-Tang Clan’ for class 9 (CDs featuring music); class 25 (clothing); and class 41 (live performances).

The producer also owns a design mark, consisting of a “highly stylised version of the letter ‘W’ resembling a bat with the words ‘Wu-Tang’ in the middle”, for the same classes.

“In light of the duration and widespread nature of opposer’s association with the ‘Wu-Tang Clan’ mark, the ‘Wu-Tang Clan’ mark is unmistakably associated with opposer such that it constitutes part of his identity,” said the opposition.

Diggs claimed that if the mark was registered it would cause damage by “trading on the enormous goodwill” associated with the ‘Wu-Tang Clan’ mark and therefore diminish the goodwill that he has built up.

In February last year, the former Turing Pharmaceuticals CEO Martin Shkreli and Wu-Tang Clan were hit with a copyright infringement lawsuit by an illustrator.

Jason Koza, a New York-based artist, sued both parties over the alleged misuse of nine portraits in a book alongside the music album “Once Upon a Time in Shaolin”. The band produced just one copy of the album and sold it to Shkreli last year for $2 million.

The dispute was dismissed without prejudice in May 2016.

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10 February 2016   Former Turing Pharmaceuticals chief executive Martin Shkreli and hip-hop band Wu-Tang Clan have been sued for copyright infringement by an illustrator.