When "Groupies" Attack: A Somewhat Crowded Field

According to the Urban Dictionary, "groupies" are individuals involved in obsessive adoration of entertainers such as musicians, actors, athletes, and even political figures. Typical "groupie" behavior is often juvenile, including even attacking one another or the very performer they supposedly admire.

A few companies have recently become involved in legal attacks on one another over who gets to own the word "groupie" and words that sound a lot like it in connection with emerging technologies.

In 2004, a Cambridge, Massachusetts company applies for "GROUPE" and "GROUPEE" in Classes 38 and 42 for online chat rooms and software.  It's domain name lives on as a music fan site, but its business doesn't.

Then in 2008, a New Jersey based startup applies for its own trademark registration on "GROUPIE" for computer application software for mobile phones in Class 9.  Groupie is apparently an iOS and web application that lets people create both public and private groups, and allows people to message back and forth and meet each other.  It has about 60,000 users so far.  

In 2011, GroupMe launches after winning TechCrunch Disrupt’s hackathon.  It is an application resident on iOS, Android, Windows Phone 7, BlackBerry and the web, and is more focused on private group messaging.  According to one report, GroupMe has become one of the darlings of the fast-growing group messaging application market, getting $10.6 million from Khosla Ventures and lots of press for its products, which just got an update to version 3.0.

Part of Specimen Submitted to Trademark Office

A tipping point is reached when GroupMe files for a federal trademark registration on its name, in connection with software capable of causing transmission of a message from a message originator to a group of recipients.  The legal dispute originates before the United States Trademark Trial and Appeal Board, when Groupie files an administrative Opposition Proceeding against GroupMe's pending application.  Now, the dispute has escalated into U.S. District Court in Manhattan, with GroupMe firing back, seeking a Declaratory Judgment of non-infringement from a federal judge to resolve the "cloud of uncertainty" hovering over the mark.

Add to the mosh pit Yawma LLC, an Oregon corporation, which in 2010 applies for "GROUPEES" for computer software website for flash sales of digital entertainment media including music and games in Class 9. Groupees.com successfully raises significant amounts of money for charity from many artists and supporters, and may have a viewpoint on all this, as well.

Source:  GoGiiGames

Finally, Shannon Tweed (from Family Jewels) has a mobile application game called "ATTACK OF THE GROUPIES" that can be played on iPads, iPhones or PC's (you just can't make this stuff up).

The lesson here is that distinctiveness is determined both by the relatedness of the mark to the product or service being offered under that mark, as well as by the number of similar marks for similar products.  

When numerous sellers of similar products use similar trademarks, those marks become difficult to distinguish and protect. Trademark professionals call this situation a “crowded field,” and it can present serious marketplace and legal problems, as is clear from the situation here. Absent a quick settlement, the parties may now spend years, and hundreds of thousands of dollars, litigating over who has the final right to legally own the mark.

Source: GreenGroupies Website

No word yet from the company that apparently owns the trademark for "GREEN GROUPIES" in connection with eco-friendly children's clothes on whether it will jump into the fray, just to keep things interesting.