The owner of LIV Golf, Incorporated (“LIV Golf”) has recently run into some obstacles on the journey to federal registration of the LIV GOLF mark for golf tournaments and golf-related products and services.
The owner of the world-renowned LIV Nightclub has recently filed a notice of opposition against the owner of the LIV Golf, citing a potential likelihood of confusion of the mark for their federally-registered LIV trademarks, as well as the potential dilution of their LIV marks should LIV Golf’s trademark applications proceed to registration.
LIV Nightclub was launched in 2008 at the famous Fontainebleau Hotel in Miami Beach, by Mr. David Grutman. Since then, the nightclub has grown into one of the foremost nightclubs in the world. LIV Nightclub is especially known to be frequented by many A-list celebrities and to host musical performances by some of the top artists in the world. Mr. Grutman himself also made a special guest appearance in the blockbuster movie Bad Boys 3 starring Will Smith and Martin Lawrence.
It is reported that the name LIV, which represents the Roman numerals for the number 54, holds significance for the nightlife venue for two major reasons:
The Fontainebleau Hotel, where the Miami-based nightclub is hosted, was founded in 1954; and
The Roman numerals for 54 pay homage to Studio 54, the celebrated New York-based disco nightclub that was frequented by some of the world’s greatest celebrities and musicians, and arguably the most historic nightclub in American history.
LIV Golf was founded in 2021 by former No. 1 golfer and Australian native, Greg Norman, and is financed by the Public Investment Fund, the sovereign wealth fund of Saudi Arabia. LIV Golf organizes and hosts professional golf tournaments all over the world. For LIV Golf, LIV also represents the Roman numerals for 54, and is a nod to the number of holes played at LIV golf tournaments.
According to United States Patent and Trademark Office (USPTO) records, on October 26, 2021, LIV Golf filed approximately 6 trademark applications for the following proposed marks: LIV GOLF LEAGUE 54, LIV 54 GOLF LEAGUE, and LIV GOLF LEAGUE. The applications were all filed on an intent-to-use basis, meaning that the proposed marks were not yet in use at the time of filing but the owner intended to use the marks in the near future.
LIV Golf filed trademark applications for the mark “LIV GOLF LEAGUE 54” in international class 41 for entertainment services, namely, the development, creation, and production of . . . programs featuring sports and culture, in international class 28 for golf-training equipment and other golf-related products and in international class 41 for organizing and conducting professional golf tournaments, among other services. LIV Golf also submitted trademark applications for “LIV 54 GOLF LEAGUE” and “LIV GOLF LEAGUE” for the same goods and services. For trademark purposes, an international class is simply a category used to classify like goods and services. The USPTO uses the Nice classification, which is an international classification used for the registration of marks. Goods are classified in Classes 1 through 34 and Services are grouped in Classes 35 through 45. All goods and/or services identified in a particular trademark application must be assigned to the appropriate class.
On September 13, 2022, the USPTO published the above-referenced trademark applications for opposition in the Trademark Official Gazette (TMOG). The TMOG is a USPTO publication that is published online every Tuesday, and includes information regarding pending trademark applications that have been approved for publication. The opposition period is a period of 30-days that provides public notification of the pending mark and allows those who believe that their intellectual property rights will be harmed by allowing the trademark application to proceed to registration an opportunity to oppose the filing.
Well, LIV Nightclub took advantage of the opposition period and filed a notice of opposition with the Trademark Trial and Appeal Board (TTAB) on March 11, 2023. The owner of NIV Nightclub made a number of assertions in its Notice of Opposition, alleging that its trademark rights would be damaged by the registration of LIV Golf’s proposed marks.
As previously mentioned, LIV Nightclub was launched in 2008, and LIV Nightclub has a number of federally-registered trademarks. On May 22, 2008, LIV Nightclub filed for federal registration of the mark “LIV” in connection with night clubs in International Class 41, which registered on 06-14-2011 and bar services and cocktail lounges in International Class 43, which registered on 02-05-2013. The brand also has registered the mark “LIV” for sunglasses, make-up bags (sold empty), tote bags and producing and arranging concerts, festivals, and nightclub performances in the field of music, among other goods and services. LIV Nightclub also has registered a stylized version of “LIV” and “LIV ON SUNDAY” for several of the same goods and services.
LIV Nightclub made several arguments against registration of the LIV Golf marks in its Notice of Opposition. First, LIV Nightclub stated that LIV Golf’s applications should be refused because LIV Nightclub has prior rights in the LIV trademark. As outlined above, LIV Nightclub has registered several LIV and LIV-formative marks dating back to 2008 and LIV Nightclub asserted that its marks have been in use for approximately 15 years before LIV Golf’s proposed marks. LIV Nightclub also argued that LIV Golf’s trademarks consisted of the whole of their trademark, “LIV,” plus the addition of “GOLF LEAGUE” and/or “54.” And, as such, LIV Golf’s proposed marks were highly similar in “sight, sound, meaning and overall commercial impression,” lending to a likelihood of confusion between the two marks. LIV Nightclub also argued that the marks are “visually, phonetically, and aurally similar” and the good and services of both companies shared similarities, noting that LIV Golf provided entertainment services in the form of music entertainment, live DJ entertainment, “bar and party vibes,” restaurant services, hospitality suites and table service, in addition to organizing and conducting golf tournaments.
LIV Nightclub emphasized the fact that it operated one of the most famous and high-profile nightlife venues in the world and gained widespread popularity as its goods and services were highly publicized and it spent considerable time and resources promoting, advertising and continuing use of its “LIV” and LIV-formative marks. LIV Nightclub also highlighted the fact that it licenses its trademarks for and relating to a number of entertainment events, charity events, and nightlife events and venues throughout the world, including New York, Atlanta, Las Vegas, Tampa, Montreal, Toronto, Minneapolis and Dallas.
Finally, LIV Nightclub asserted that its trademarks registrations were “valid, subsisting, in full force and effect” and were proof the the validity of its trademarks as shown in the registrations and proof their exclusive right to use the LIV trademark in connection with the good and services identified in the registrations, as well as any other related goods and services.
Based on the above, LIV Nightclub argued that consumers would possess the mistaken belief that the LIV Golf trademarks were “approved, endorsed, sponsored or affiliated” with LIV Nightclub or LIV Nightclub was the source of LIV Golf’s goods and services. LIV Nightclub also claimed that LIV Golf was attempting to capitalize off of LIV Nightclub’s fame and goodwill, or brand reputation. As such, LIV Golf’s trademark applications should be denied because it would dilute or has already diluted the “distinctive quality” of LIV Nightclub’s trademarks, especially considering LIV Nightclub’s longstanding use of the trademarks and the fact that the trademarks were arbitrary and distinctive.
Now that LIV Nightclub has submitted its Notice of Opposition, LIV Golf has until April 20, 2023 to respond. Although the matter is still pending before the TTAB, there are a number of issues upon which the case could turn upon at trial. One of the main issues is LIV Nightclub’s assertion that the registration of LIV Golf’s trademark application will likely cause confusion to the consuming public.
Likelihood of confusion is one of the most frequent grounds for the denial of trademark applications. Moreover, most of the appeals of these decisions are denied by the TTAB. Under the trademark statute, a mark cannot be registered if it is so similar to a mark that is already registered that when it is used in connection with the goods and services of the trademark applicant it will cause either confusion, mistake or deception to the consuming public. In a likelihood of confusion analysis, courts look to what are referred to as the DuPont factors to determine whether there is, in fact, a likelihood of confusion between the mark that is already registered and the mark that is seeking to be registered.
In a likelihood of confusion analysis, two of the most important factors will be: 1) the similarities between the actual marks, and 2) the similarities between the goods and services. Marks are analyzed by assessing their appearance, sound, connotation and overall commercial impression. This means that courts will look at the marks and analyze whether they look visually similar, whether they sound similar, the meaning of the mark and how the consumer would perceive the mark when encountering it in the marketplace or real world scenarios. These factors are weighed to determine whether or not there is a probable likelihood of confusion between the two marks and the applied-for mark can or cannot proceed to registration.
In the case at hand, it can be argued that both marks are visually and aurally similar. The proposed marks, LIV GOLF LEAGUE 54, LIV 54 GOLF LEAGUE, LIV GOLF LEAGUE, also include the whole of LIV Nightclub’s registered mark “LIV.” LIV Golf can potentially make the argument that the marks are different as its marks contain the addition of the number 54 and/or GOLF LEAGUE. However, LIV Nightclub can also make the argument that the dominant portion of the mark is “LIV.” Moreover, in its applications, LIV Golf disclaimed the “GOLF LEAGUE” portion of the mark, so that may lend more credence to the fact that LIV is the dominant portion of the proposed marks.
Additionally, both LIV Nightclub’s registered marks and LIV Golf’s proposed marks share a similar connotation, or meaning, albeit for different purposes. Both “LIV” marks represent the roman numerals for the number 54. For LIV Nightclub, the roman numerals pay homage to the historic nightclub Studio 54 and, for LIV Golf, the roman numerals for 54 represent the number of holes played in its golf tournaments. Although the roman numerals are significant to the parties for different reasons, this factor may lean in favor of LIV Nightclub depending on the TTAB’s view on the matter.
Where the matter may be less clear is as relates to similarity of goods and services, as well as overall commercial impression. There is no disputing the fact that LIV Nightclub is a very well-known and world-renowned nightlife venue; however, is there a real likelihood of confusion between LIV Nightclub and LIV Golf? LIV Nightclub wants us to believe that its goods and services are so similar to LIV Golf’s goods and services that individuals who frequent nightclubs and individuals who participate in high-level golf tournaments will believe that LIV Nightclub sponsors, supports or endorses golf-related goods and services under the LIV trademark. Is that plausible? Do you expect the brand that has provided world-class nightlife entertainment services and celebrity performances with the likes of Drake and Lil’ Wayne for the past 15 years to now branch out into the arena of organizing professional golf tournaments and providing golf-related services and merchandise?
The purpose of the trademark statute is to spur innovation and creation, as well as protect the consuming public. These two objectives are occasionally at odds and these goals must definitely be balanced. The trademark statute does not prohibit similar and/or the same mark for major brands in different arenas or spaces. For example, Delta airlines is able to exist in the aviation space, and Delta faucets is able to exist in the home improvement and hardware space, with both brands enjoying the benefits and privileges of federal trademark registration.
Do you believe LIV Nightclub and LIV Golf can do the same? Are the goods and services each brand provides different enough so that the brands can co-exist? We’ll see what the TTAB has to say about this case soon enough, but in the meantime, let me know your thoughts in the comments!
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