Jimmy Buffett won a trademark dispute and precluded the applications for “Marijuanaville” marks from registering due to a likelihood of confusion with his famous MARGARITAVILLE® mark for clothing (including shirts and caps), nightclub services, and other goods and services. The Parrotheads, Jimmy Buffett fans, can rejoice in the win.


The dispute involved pro se applicant Rachel Bevis who wanted to register for the mark “Marijuanaville” in connection with “T-Shirts, Hats, Sweat Shirts, sweat pants, Jackets, Socks,” in International Class 25 and “Drive-through retail store services featuring coffee and related goods; Retail apparel stores; Retail closing stores,” in International Class 35.

Mr. Buffett opposed the application on the basis of a likelihood of confusion between the applied for mark “Marijuanaville” and his well-known MARGARITAVILLE® registered mark. In determining whether there was a likelihood of confusion, the Board, as usual, applied the factors identified in the In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973).     

The Board first looked at the fame of the prior mark. This fame analysis (unlike with respect to dilution) does not require a showing of fame among every segment of the U.S. population.  Instead, the Board explained it was sufficient if a “significant portion of the relevant consuming public. . . recognizes the mark as a source indication.”

The famous singer/songwriter himself submitted a Declaration in support of the opposition. He explained that he released his fan favorite song “Margaritaville” in 1977 and has performed it at every concert since them.  The song was even inducted into the GRAMMY Hall of Fame. He opened a retail store named “Margaritaville” in 1985 in Key West. He coined the term for a “state of mind” and lifestyle embodied in his clothes. Mr. Buffett’s team put in other evidence too. The Board found that the MARGARITAVILLE® mark was famous for “clothing” for purposes of a likelihood of confusion analysis.

In assessing the second factor, the Board observed that the goods identified in the application were in part identical with Buffett’s registrations. Neither the registrations nor the application contained restrictions on the channels of trade or classes of purchasers. Accordingly, this factor weighs in favor of a finding of likelihood of confusion.

The Board next looked at the conditions of sale and presumed that the goods and services are marketed to all ordinary clothing purchasers at normal marketing channels (e.g. retail and on-line). Consumers may make impulse purchases of inexpensive shirts or hats.  This factor also favored a finding of a likelihood of confusion.

Because of the identical goods, the necessary degree of similarity between the marks declines.  Although the Board declined to consider the testimony from a linguistic expert, the Board did consider the evidentiary materials attached to the expert declaration. Further, the Board compared the marks and found that they were “single-term 14-letter marks comprised of five syllables, each commencing with the same letter string ‘mar-‘ and ending with the suffix “-ville.” In addition, both terms were associated with a similar “state of mind” caused by a substance (e.g. margarita or marijuana). This factor also favored Buffett’s claim of a likelihood of confusion.

The Board then went through the remaining factors finding them all to be in favor of finding a likelihood of confusion, except the following factors were neutral: (1) actual confusion and contemporaneous use (it was an intent-to-use applications); (2) variety of goods (only had found fame with respect to clothing and retail clothing stores).

The Board concluded that Jimmy Buffett’s company had proven its claim and that Ms. Bevis could not obtain a registration for “Marijuanaville.” The Parrotheads can toast with a margarita and sing “MARGARITAVILLE” in celebration.