Chubby Checker Not Amused By “The Chubby Checker.”
Chubby Checker, the American singer-songwriter with the such hits as “Twist”, is suing Hewlett Packard for a penis measuring app called “The Chubby Checker.” The app was created by a third party and sold in the HP app store for the Palm OS. Chubby Checker alleges trademark infringement.
HP is denying liability because they did not create the app or name it. U.S. District Judge William Alsup of the Norther District of California found this argument unconvincing because HP has a detailed application and approval process for applications and therefore was aware of the infringement. Judge Alsup is allowing the case to move forward.
Trademark infringement requires a likelihood of consumer confusion. In this case, I’m not entirely convinced that a consumer would actually think the musician, Chubby Checker, would create and market an app such as this. However, Chubby Checker, the musician, does appear to have a strong case for trademark dilution through blurring and tarnishment. Under the Federal Trademark Dilution Act, contained within the Lanham Act, federal law protects famous marks from third-party uses that may reduce the famous mark’s distinctiveness or reputation.
When determining whether a mark is sufficiently distinctive and famous to be afforded protection, a court looks at these factors:
- The degree of the subject mark’s inherent or acquired distinctiveness;
- The duration and extent of use of the mark in connection with the goods or services it identifies;
- The duration and extent of advertising and publicity;
- The geographical extent of the relevant trading area;
- The channels of trade;
- The degree of the mark’s recognition in the trading areas and channels of trade used by the mark’s owner and the person against whom the injunction is sought;
- The nature and extent of third parties use of same or similar marks; and
- Whether the mark has been registered.
A court would easily find that Chubby Checker’s mark is famous. “Chubby Checker” is a registered trademark and claims a priority date as early as 1953. His song “Twist” is rated as one of the hottest singles in history.
In determining dilution, a court looks at these factors:
- the degree of similarity between the mark or trade name and the famous mark;
- the degree of inherent or acquired distinctiveness of the famous mark;
- the extent to which famous mark is engaging exclusive use of the mark;
- the degree of recognition of the famous mark;
- whether the user of the mark or trade name intended to create an association with the famous mark; and
- any actual association between the mark or trade name and the famous mark.
A court would also find that the app “The Chubby Checker” is diluting a famous brand.
Trademark dilution by blurring occurs when a third party’s use of the mark whittles away the original mark’s distinctiveness. Trademark dilution by tarnishment occurs when the third party’s use of the mark may use the original mark in an unwholesome or distasteful way. I think a court will find that a penis size measurement may, in fact, be a distasteful use of Chubby Checker’s stage name. And it is probable that a court will not find the humor in the app name as I have.
The case is in the U.S. District Court, Norther District of California: Ernest Evans et al. vs. Hewlett-Packard Company et al., 13-2477.