On July 1, 2011, Paul “DJ Paulie” Lis of South Windsor, Connecticut sued Paul “Pauly D” DelVecchio from MTV’s show “Jersey Shore” for trademark infringement. Mr. Lis registered the marks “DJ PAULIE” and “DJ PAULIE’S WORLDWIDE COUNTDOWN” for “entertainment services in the nature of disc jockey services” with the United States Patent and Trademark Office (USPTO) in May 2008.
Trademark infringement is a violation of the exclusive rights attached to a trademark without the consent of the trademark owner. Infringement occurs when an infringer uses a mark that is identical or confusingly similar to a mark owned by another party with identical or similar products or services covered by the registration. Courts weigh certain factors to determine whether marks are confusingly similar: (1) strength of the mark; (2) proximity of the services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of services and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines.
In his registration, Mr. Lis claims he adopted the mark “DJ PAULIE” in 1971 and has used it continuously since 1973, seven years before Mr. DelVecchio was born. Although Mr. DelVecchio filed two applications for “DJ PAULY D” in February 2010, the USPTO has refused his registration on the grounds that the mark “DJ PAULY D” is confusingly similar to Mr. Lis’ registrations.
In his complaint, Mr. Lis is asking for $4 million in damages. Mr. Lis is focusing on how the mark “DJ PAULY D” has impaired his ability to be known by his DJ PAULIE marks. According to Mr. Lis, “[b]efore [Jersey Shore] went on the air, my website was very successful and getting attention from national advertisers, but [n]ow, I’ve pretty much been wiped off the Google map.” Additionally, the complaint alleges that “the reality television show gained immediate popularity by following a group of young adults pursuing a debauched lifestyle suggestive of loose morals, violence, intoxication and liberal profanity – the exact opposite of the reputation [of] ‘DJ Paulie’.”
Mr. Lis claims that the mark “DJ PAULY D” has caused “reverse confusion,” which occurs when a second user becomes better known than the first user. Thus, Mr. Lis is concerned that consumers will incorrectly believe that he is a latecomer trying to capitalize on Mr. DelVecchio’s fame, rather than the first user.
Jose M. Rojas, Mr. Lis’s attorney, claims that a cease and desist letter was sent to MTV to prohibit the marketing of the mark “DJ PAULY D,” but no response was received. Thus, Mr. Lis filed a lawsuit against not only Mr. DelVecchio, but also Viacom, Hearst Publications, and Baskin Robbins, alleging that they “advertised, promoted and sold disc jockey software incorporating the mark “DJ PAULY D,” and in association with the persona” of Mr. DelVecchio.
Assuming that Mr. Lis can substantiate his first use date of 1973, sources believe that he will have priority over the mark “DJ PAULIE” considering that Mr. DelVecchio was born seven years after 1973.
Filed under: Trademark by kylew