On Monday, March 13th, a complaint filed in the U.S. District Court for the Southern District of Florida (S.D. Fla.) added a new twist in a legal spat brewing over the trademark status of the name of a cat. The parties in the case include the owner of an online retail store for cat’s apparel and a well-known DJ in the progressive house music genre who is seeking an opportunity to build a brand under his pet’s name.
The complaint filed by Meowingtons LLC of Fort Lauderdale, FL, seeks injunctive and declaratory relief against Canadian music producer Joel Zimmerman, better known to fans of progressive house music as deadmau5 (pronounced “dead mouse”). Meowingtons is seeking to prevent Zimmerman from using a series of marks employing the term “MEOWINGTONS” as well as the destruction of all physical and digital goods using those marks, including websites and social media profiles. Meowingtons also seeks a declaratory judgment that it is the senior user of the “MEOWINGTONS” mark.
This action arise out of a petition for cancellation filed by Zimmerman near the end of last December at the Trademark Trial and Appeal Board (TTAB). Zimmerman sought the cancellation of U.S. Trademark Registration No. 4711265, filed July 2014 to cover the use of the “MEOWINGTONS” mark for retail store and online retail store services featuring cat themed accessories and clothing. The petition claims grounds of priority and likelihood of confusion with U.S. Trademark Serial No. 86719048, filed August 2015 to cover the use of “PROF. MEOWINGTONS” in eight different classes for goods and services such as CD and DVD recordings, printed matter, backpacks, woven textile goods, articles of clothing and toys.
Much of Zimmerman’s petition focuses on the fame he’s achieved performing as deadmau5 including unsolicited media and fan coverage as well as extensive licensing and promotional efforts. In January 2010, Zimmerman noted that he adopted a cat which he named Prof. Meowingtons, PhD and whose likeness has appeared in YouTube videos and deadmau5 album covers dating back to April 2010. Zimmerman also noted the use of the name in deadmau5 performance tours, such as the fall 2011 Meowingtons Hax Tour.
Zimmerman’s petition for cancellation further alleges that Emma Bassiri, the founder and CEO of Meowingtons LLC, is “a long-time fan of deadmau5 and his music and followed him on social media” and thus would have known about the Meowingtons name before registering for and using the mark. This particular contention rankled Meowingtons and the recent suit filed in S.D. Fla. calls these “contradictory, harmful and malicious statements” as damaging to Bassiri’s business and reputation. Bassiri’s complaint notes that she registered the meowingtons.com domain in February 2014 without any objections or complaints and that her trademark application was never opposed during the opposition period. As to the allegation of Bassiri as a fan of deadmau5, Zimmerman’s petition only cites that fact “on information and belief” without explaining that information.