Wu-Tang Clan's RZA Opposes Trademark Application For Dog-Walking Company Called Woof-Tang Clan

from the sup-dawg dept

The last time we mentioned the Wu-Tang Clan here at Techdirt, we were discussing the group’s bizarre yet inventive attempt to curtail digital music’s infinite goods problem by releasing a single copy of an entire album for $1 million. It was a creative approach, though one that likely isn’t a model that transfers well to the music industry as a whole. But it seems that the copyright arena isn’t the only intellectual property venue in which Wu-Tang wants to play, as RZA, a member of the group, has filed a trademark opposition to a dog-walking company calling itself Woof-Tang Clan.

In a lawsuit filed November 15th, RZA (real name Robert Diggs) touted the long history of the Wu-Tang Clan mark and how its appearance on various goods and services “has come to represent enormous goodwill.” The suit also claimed the Wu-Tang mark is “unmistakably associated with [RZA] such that it constitutes part of his identity.”

Woof-Tang Clan’s owner, Marty Cuatchon, filed a trademark application for his company on June 8th. As the New York Daily News noted, the company also briefly sold T-shirts on its website that made explicit reference to late Wu-Tang rapper Ol’ Dirty Bastard’s debut album, Return to the 36 Chambers: The Dirty Version. The shirt tweaked the album’s famous cover – a snapshot of ODB’s ID card for food stamps – to feature a dog named Bali in the rapper’s place. Another shirt parodied the cover of De La Soul’s 3 Feet High and Rising. Both have been removed from the company’s website.

Now, the t-shirt aspect of this will muddy the waters as to just how valid an opposition this is. It’s almost certain that RZA has a trademark for all things “Wu-Tang Clan” for apparel, after all. Still, the shirts are obvious parody, in line with Woof-Tang Clan’s obvious homage as a parody in its business’ name to begin with. Commercial in nature or not, this sort of parody is generally regarded as protected fair use.

Particularly, it should go without saying, when that use in no way deceives the consuming public about the source or affiliations of the supposedly offending company. That confusion is the controlling factor for trademark concerns and any claim that the public is going to think this small dog-walking company is run by or is affiliated with a world-renowned rap group is a hell of a logic-hurdle over which to leap. Rolling Stone’s reporting suggests that RZA’s filing claims that Woof-Tang Clan is suggesting a connection to the group, but all it actually suggests is that the folks behind Woof-Tang Clan are likely fans of the RZA and his cohorts. Marty Cuatchon, the man behind the company, confirmed as much.

Speaking with the Daily News Saturday, Cuatchon said he was unaware of RZA’s trademark challenge and declined to comment until speaking with a lawyer. However, he did say, “I am a fan. We walk dogs. I thought it was a good idea.”

A much better idea than this needless trademark opposition, I would say.

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Comments on “Wu-Tang Clan's RZA Opposes Trademark Application For Dog-Walking Company Called Woof-Tang Clan”

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17 Comments
orbitalinsertionsays:

That confusion is the controlling factor for trademark concerns and any claim that the public is going to think this small dog-walking company is run by or is affiliated with a world-renowned rap group…

About as much as i was confused thinking that WTC was Chinese, and had something to do with the film Shaolin vs Wu Tang. Or the martial art form or mountains of the same name. Or a video game.

It’s always nice to appropriate shit and then claim you are the one who made it famous or built goodwill (well, with some) identified with it.

Seriously, dude could do with a better name for walking dogs, but this is ridiculous.

Anonymoussays:

For the sake of accuracy, this matter does not involve a lawsuit of any kind. It is a proceeding before the USPTO that resulted from a trademark being published for opposition by the Office. All trademark applications that have passed substantive examination to the point that they are in condition for allowance are published for opposition, and the filing of oppositions is a routine part of trademark practice before the Office.

PaulTsays:

While I can see the reason for the opposition in general here, it’s funny that the band essentially took the brand name from a series of martial arts movies made in the 70s. This included taking samples, imagery, etc., from the pre-existing material to create their own brand.

As so often happens, it’s OK when they do it before they get famous, but wrong for others to do the same when they have wealth and fortune.

“The last time we mentioned the Wu-Tang Clan here at Techdirt, we were discussing the group’s bizarre yet inventive attempt to curtail digital music’s infinite goods problem by releasing a single copy of an entire album for $1 million”

Which, it’s worth noting, was eventually purchased by everybody’s favourite pharma scumbag Martin Shkreli, and is now the subject of a copyright lawsuit as reported on this very site 🙂

https://www.techdirt.com/articles/20160209/18505233568/artist-sues-wu-tang-clan-member-martin-shkreli-vice-magazine-copyright-infringement.shtml

Anonymoussays:

Rza did nothing wrong. The Woof-Tang Clan owner isn’t getting sued, just facing the reality that it’s probably not the brightest idea to trademark something that’s a play on words of an internationally recognized brand.

At least it’s not as bad as the Charbucks debacle, where Starbucks did sue over a product that wasn’t even trademarked.

I’d say "Relax, Marty." There probably isn’t anyone in a rush to trademark Woof-Tang Clan besides you.

PaulTsays:

Re: Re:

“it’s probably not the brightest idea to trademark something that’s a play on words of an internationally recognized brand”

As I mentioned above, half the stuff that the Wu Tang Clan is famous for is a play on pre-existing material. Where is the specific line where it become acceptable to do such things to create your brand (such as taking titles from Shaw Brothers movies, even taking stage names from pre-existing properties) and it being absolutely wrong to take your brand?

That’s a serious question, really. If your identity and brand are borrowed to begin with, where does the line start where it becomes correct for you to block others doing the same?

“There probably isn’t anyone in a rush to trademark Woof-Tang Clan besides you.”

Who are you talking to here, exactly? Do you think that the author of the article is personally involved somehow?

orbitalinsertionsays:

Re: Re: Re: Re:

I think AC meant Marty the dogwalker.

I don’t know why the non-existence of a lawsuit keeps coming up when it wasn’t mentioned. In clear terms.

_That’s a serious question, really. If your identity and brand are borrowed to begin with, where does the line start where it becomes correct for you to block others doing the same?_

It starts with “because I can”.

carlbsays:

Business as usual

Sadly, this sort of silliness is business as usual. Corporate lawyers have to appear to be doing something, anything, to justify their bloated and inflated salaries.

That’s how we end up with silliness like http://www.fcc.gov/ecfs/filing/111493108806 where the owner of 1-800-Contacts Inc. has registered 150 domain names including “1800contactssucks.com” just to keep them out of the hands of disgruntled consumers and has registered toll-free numbers 1-888-CONTACT, 1-877-CONTACT, 1-866-CONTACT and 1-844-CONTACT just to keep them out of the hands of competitors. They tried to grab 1-855-CONTACT, but some phone sex spammer in Philly (who is using six captive RespOrgs, who connect to the system using a status normally assigned to long-distance telephone companies, to hoard and warehouse millions of numbers and park adverts on them) got there first.

1-800-CONTACTS is opposing an FCC proposal that would put 1-833-CONTACT (and 17000 other numbers which were requested by more than one phone company when the new area code opened earlier this year) on the auction block. Why? As far as I can tell, they think they’re entitled to a monopoly on 266-8228 (which spells the generic dictionary word “contact”) across the entire North American Numbering Plan (Canada, USA and 20 Caribbean nations) just because the company has registered four logos which contain the number “1-800-Contacts” with various typefaces and backgrounds.

Of course they have no lawful entitlement, as a monopoly on the word “contact” touches everything from “contact sports” to “contact cement” to photographic “contact prints”. Nonetheless, the lawyers get paid win, lose or draw and the corporations are willing to pay if this sort of nonsense has a chilling effect on new entrants to the marketplace.

The “Woof Tang Clan” case is a bit different in that the dog walker, by filing trademark themselves, is nominally attempting to get their own monopoly on that name and prevent others from using it. Opposing that application is not the same as saying that the dog walker can’t use “woof” as a brand, only saying they can’t monopolise the name.

It gets messy. When Kemmons Wilson named a motel chain “Holiday Inn” in 1952, his architect had suggested the name as a joke after seeing an old 1940’s Bing Crosby film of that name which introduced the now-traditional song “I’m dreaming of a white Christmas” among others. The only problem was that there already was a hotel in Niagara, Ontario named “Holiday Inn by the Falls” which wasn’t part of the chain until after the turn of the millennium; they could keep using the name locally because they were there first, but could not expand. That kept the chain out of Niagara ON for decades (although Niagara NY and St. Catharines ON were still fair game); there was also an existing hotel in the Carolinas with a similar name which ran for years.

A trademark registration applies to one field of business in one country and is subject to claims of prior use by others. That won’t stop corporate lawyers from overreaching. As long as companies are willing to pay for frivolous claims, some ambulance chaser will be more than eager to take their money. No ethical consideration in the profession prevents this. Business as usual.

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