In the midst of a pending right of publicity lawsuit filed against it and fast fashion company Missguided by famed musician and entrepreneur Sean “Diddy” Combs, the owner of the Sean John brand has been hit with a new suit by a separate Diddy-owned company. This time Sean John owner GBG Sean John LLC is on the hook for allegedly engaging in common law trademark infringement, common law unfair competition, and deceptive practices under New York state law, among other claims, as a result of its “misappropriation” and attempt to “hijack” the musician-slash-mogul’s famed “VOTE OR DIE” trademark.
According to the complaint that it filed in a New York federal court on February 10, Combs-controlled Citizen One d/b/a/ Citizen Change claims that New York-based GBG is actively using the trademark “VOTE OR DIE” in connection with politically-themed Sean John products. The problem with that? While GBG acquired the Sean John brand (and the corresponding corporate entity, Christian Casey, LLC) from Combs in November 2016, the brand management company “never acquired” rights in or a license to use the “VOTE OR DIE” mark, which is owned by Citizen Change.
Since the founding of Citizen Change, which Combs established in 2004 when he “launched VOTE OR DIE, a nationwide non-partisan, voter-participation campaign,” Combs and the New York-based not-for-profit corporation have “used VOTE OR DIE on clothing, in nationwide commercials, [and] in nationwide voter registration events to help identify Citizen Change and its association with Mr. Combs’s endeavors,” Citizen Change alleges in its complaint. Significantly, Citizen Change asserts that ownership of the “VOTE OR DIE” trademark – including the registration issued by the U.S. Patent and Trademark Office (“USPTO”) in 2010 – was never controlled by Christian Casey, LLC, and as a result, GBG did not amass any rights in the “VOTE OR DIE” mark when it acquired Sean John from Combs.
However, that has not stopped GBG from attempting to piggyback on the esteem of the mark after acquiring the Sean John brand. Citizen Change alleges that GBG “has attempted to hijack the VOTE OR DIE mark … to establish a connection between [Citizen Change] and [GBG’s] commercial activities when no such connection has ever existed.” Instead of developing “a new trademark for [its] politically-inspired merchandising efforts, [GBG] has engaged in bald opportunism by applying to register the mark VOTE OR DIE after the USPTO administratively cancelled the registration originally obtained by Citizen Change.”
Because it has consistently used the “VOTE OR DIE” mark and thus, has not “abandoned” the mark, Citizen Change argues that the cancellation of its registration by the UPSTO “did not terminate the [common law] rights [that it holds in] the VOTE OR DIE mark.” In fact, Citizen Change contends that in 2018 Combs “appeared at a political event, wearing a t-shirt bearing the VOTE OR DIE mark while promoting, among other things, awareness of the need for young people to participate in the political process.” Around the same time, CE Trademark – which is the licensing arm of Citizen Change – “used the VOTE OR DIE mark for that same purpose and others when Mr. Combs posted a photo in which he wore a t-shirt bearing the VOTE OR DIE mark on social media with the hashtag ‘VoteOrDie.’” And still yet, the VOTE OR DIE mark was also “used for that same purpose and others when Mr. Combs posted a photo in which he wore a t-shirt bearing the VOTE OR DIE Mark on social media with the hashtag ‘VoteOrDie.’”
With that in mind, and given that GBG’s “use of the mark VOTE OR DIE is likely to cause consumer confusion and to deceive purchasers – leading them to believe that [GBG’s] products bearing the mark VOTE OR DIE originate from [Citizen Change] – this unlawful conduct must stop,” Citizen Change asserts in its suit. As such, Citizen Change has set out claims of trademark infringement and unfair competition, asking the court to immediately and permanently bar GBG from “further use of the illegitimate VOTE OR DIE mark in commerce,” and is seeking monetary damages in connection with such alleged infringement.
More than that, though, Citizen Change claims that GBG has breached an oral contract that the parties entered into in furtherance of which GBG “agreed, among other things, to assign and transfer to CE trademark the trademark application for VOTE OR DIE” that it filed in November 2019 for “the exact same mark as the VOTE OR DIE Mark that was successfully registered by Citizen Change in 2010” for use on “two of the same classes covered by the Citizen Change registration for the VOTE OR DIE Mark.”
“By continuing to seek a federal registration for VOTE OR DIE and by using that mark,” Citizen Change claims that “GBG has breached that agreement and caused CE Trademark to suffer damages.”
*The case is Citizen One, Inc. d/b/a Citizen Change and CE Trademark, LLC, v. GBG Sean John LLC, 1:21-cv-01199 (SDNY).
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