Hells Angels Play Nice With Toys “R” Us
Just another day in the trademark world: everyone’s favorite motorcycle club recently clashed with Toys “R” Us and a yo-yo company.
Hells Angels Motorcycle Corporation (“HAMC”), a California non-profit mutual benefit organization, owns several US trademark registrations, including some which protect its famous “Death Head” logo, pictured above on the right. HAMC filed suit in the US District Court for the Eastern District of California against Yomega, the manufacturer, and Toys “R” Us, the seller, of yo-yos allegedly bearing a design “confusingly similar” to the Deaths Head mark.
Here’s what HAMC had to say about its mark:
Plaintiff HAMC…[has] continuously employed the design mark depicting a skull with wings (the “HAMC Death Head Mark”) as a collective membership mark, trademark and service mark used in connection with the promotion, advertising, conduct and expansion of a motorcycle club, including indicia of membership, and on authorized items for members only.
From more than half a century of continuous and conspicuous usage, the HAMC Death Head Mark is famous. The HAMC Death Head Mark is widely known and recognized by the public as indicating the Hells Angels Motorcycle Club. Plaintiff HAMC and its predecessors in interest have exercised legitimate control over the membership, trade and service uses of the HAMC Death Head Mark by the duly authorized affiliates and licensees, and have been diligent and successful in abating the use of the HAMC Death Head Mark by unauthorized third parties.
Yomega responded with a counterclaim asking the court to invalidate two of HAMC’s trademark registrations on the basis of fraud. The registrations, which can be seen here and here, list a variety of goods associated with the mark. Yomega alleged…
…that Hells Angels has not ever used, does not presently use, or never planned to use the HAMC Death Head design mark… in connection with all of the goods and services…
Meaning, HAMC allegedly identified goods in its USPTO applications, which became registrations, that it was not using the mark on. Shortly thereafter, HAMC and the Defendants entered into a confidential settlement.
There’s a moral here even for non-motorcycle riders: be scrupulous about the goods and services identified in your trademark applications. Here’s an example of a trademark owner who acted to enforce their rights but may have had to accept a lesser settlement due to an overbroad goods and services claim. The days when one could claim every good and service imaginable are in the rear-view mirror.
