Was there any importance at all to the phrase “Material Girl” before Madonna had a now-classic 1985 hit song? Madonna has been the “Material Girl” for all those years. In 2010, when the Queen of Pop started a new trendy juniors clothing line that she runs with her daughter Lourdes, they called it “Material Girl” – logically – and it launched at Macy’s a couple of weeks ago.

However, Californian clothing company LA Triumph has sued Madonna, claiming that the new “Material Girl” collection is a trademark infringement on the company’s line of the same name. LA Triumph has asked for a declaratory judgment that it has rights to the “Material Girl” name, and that all profits from Madonna’s line and her “MG” company be given to them.

LA Triumph claim that it has been “continually selling similar clothes in similar retail outlets at similar price points under the Material Girl brand since at least 1997, and Madonna and her new-found company do not have the right to trade in the same space under this brand”. Apparently, both lines will have roughly the same price tag, causing confusion in the marketplace. LA Triumph also alleged that it faces “a risk of being subsumed by Madonna’s profile, obvious worldwide notoriety” and massive marketing campaign.

In response, Madonna attempted to get the lawsuit tossed by presenting evidence she created a hit song that brought “Material Girl” to fame more than 25 years ago, that she IS the “Material Girl” and that she has been selling related merchandise for about 25 years – long before LA Triumph thought of registering the “Material Girl” mark in California.

Although they will be permitted to make this argument to the jury, Federal Court judge Otero denied Madonna’s claim that she is the senior trademark user of the “Material Girl” tag, clearing the path for a lawsuit by LA Triumph scheduled in October 2011.

“This Court and other courts have recognized that the singing of a song does not create a trademark”, explained judge Otero, “Defendants’ argument that Madonna created the “Material Girl” mark through her performances fails as a matter of law.” The judge also rejected arguments that $85 million worth of “Material Girl” related merchandise sales in the 1980s is enough to establish being the senior trademark user because concert paraphernalia doesn’t strictly equate to clothing sales.

The judge also found that Madonna’s witnesses offered contradictory testimony about when she started labelling clothes with the “Material Girl” mark. One of the lawyers who helped set up the clothing company, for instance, said it was his idea to call the clothing line “Material Girl”.

So now Madonna will have to go to trial to hang onto rights to the “Material Girl” label. We have no doubt that Madonna will manage, even if she has to give up the “Material Girl” mark. Who wouldn’t buy “Like a Virgin” tops, “Causing a Commotion” skirts, “Papa don’t Preach” jeans or “Don’t cry for me Argentina” dresses for their teenage daughters?

XXX domainnames

In September 2011 the new .XXX top level domain names will be launched for websites with erotic or pornographic content.

The .XXX domain names are specifically introduced for companies in the adult entertainment industry, at least in first instance, and these .XXX domain names will soon be available for registration. As of December 6th, 2011, anyone can claim any .XXX domain extension. This also opens up the possibility of claiming a .XXX domain name containing your company’s trademarks.

Obviously you do not want your trademark to be used as a .XXX domain name or, even worse, your trademark for your best-selling product to be used for a website with pornographic content. In order to prevent this, a possibility to block the registration of this domain name(s) has been introduced. The costs for such blocking are non-recurrent and relatively low; blocking will prevent abuse of your trademarks but also costly litigation proceedings later on, to prohibit .XXX domain names with your trademarks or even pornographic websites.

Muller & Eilbracht BV can assist you in blocking .XXX domain names corresponding with your trademarks, which means that your trademark will no longer be available to be registered as a .XXX domain name. In order to qualify for such blocking, your trademarks must be registered. In that event, and only during the period from September 7 to October 28, 2011 such trademarks can be blocked from being used as .XXX domain names.

The only .XXX domain names eligible to be blocked are those that are identical to your trademarks, derivations thereof can unfortunately not be blocked.

If you are interested in preventing the unauthorised use of your company’s trademarks as a new .XXX domain name, or even as a pornographic website, please do not hesitate to contact us immediately.

We will be glad to let you in on the possibilities of blocking .XXX domain names and we can assist you in choosing the most effective strategy of preventing your valuable trademarks from being associated with these .XXX domain names and of course to block .XXX domain names with your trademarks.