Taylor Swift Calls ‘Lucky 13’ Infringement Suit Frivolous, But Is It?
Taylor Swift and American Greetings Corporation submitted their answer to a trademark infringement suit commenced by an Orange County-based Blue Sphere Inc. doing business as Lucky 13. In their answer, Swift and American Greetings urged the court to dismiss the allegedly frivolous lawsuit, claiming that the only purpose of the suit is to draw attention to the plaintiff’s brand.
Filed in May, the suit alleged that despite Blue Sphere’s ownership of federally registered ‘Lucky 13’ trademarks, Swift marketed and sold clothing that bears ‘Lucky 13’ without its authorization while American Greetings used the mark to promote its ‘Lucky 13’ greeting card contests. Blue Sphere is seeking injunctive relief, Swift’s profits, Lucky 13’s lost profits and damages.
Despite Swift’s claim, Blue Sphere may have a strong case given the fact that the phrase and not a particular design of the phrase ‘Lucky 13’ is registered. By registering the phrase ‘Lucky 13’, Blue Sphere gets trademark protection against anyone using the phrase Lucky 13 in the categories that it is registered under—clothing is one of them. In addition, Blue Sphere, founded in 1991, has been selling a variety of Lucky 13-branded merchandize including T-shirts and jewelry for nearly 20 years. Therefore, its use satisfies the five-year consecutive use requirement to invoke trademark incontestability, making the mark immune from challenges with exceptions that do not likely apply in this case.