“Certified Lover Boy” Gets No Love from the U.S. Patent & Trademark Office

On September 3, Drake finally dropped his heavily anticipated 6th studio album, “Certified Lover Boy.”¹[1]Drake – Certified Lover Boy, GENIUS, https://genius.com/albums/Drake/Certified-lover-boy (last visited Sept. 16, 2021). Within twelve hours, the album set a record for the most-streamed album on Apple Music and Spotify in 2021.²[2]Sophie Caraan, Drake ‘Certified Lover Boy’ Breaks Apple Music Records, HYPEBEAST (Sept. 6, 2021), https://hypebeast.com/2021/9/drake-certified-lover-boy-breaks-apple-music-records; Selome Hailu, Drake Breaks Apple, Spotify Records with ‘Certified Lover Boy’, VARIETY (Sept. 3, 2021, 5:01 PM), https://variety.com/2021/music/news/drake-apple-music-record-certified-lover-boy-1235056135/. The aesthetic and ease of manipulation of the cover art has made it go viral, resulting in memes created by fans using photoshop.³[3]Chloe Gordon, Drake’s ‘Certified Lover Boy’ Album Cover Inspires a Surge of Spin-off Memes, PRINTMAG (Sept. 9, 2021) https://www.printmag.com/post/drake-s-certified-lover-boy-album-cover-inspires-a-surge-of-spin-off-memes. Because of the album’s fame, the phrase “Certified Lover Boy” now holds massive value for Drake’s brand.⁴[4]Id. Fans can now purchase merchandise from the Nike x Drake “Certified Lover Boy” collection—a collaboration between Nike and the rapper.⁵[5]Alek Rose, You Can Still Shop Drake’s ‘Certified Lover Boy’ Nike Merch Here, HIGHSNOBIETY, https://www.highsnobiety.com/p/drake-certified-lover-boy-nike-merch/ (last visited Sept. 16, 2021); Drake ‘Certified Lover Boy’ Merch: Release Date, Restock & More, CAPITAL XTRA (Aug. 31, 2021, 4:26 PM) https://www.capitalxtra.com/artists/drake/news/certified-lover-boy-nike-merch-release-date-restock/. Despite the association between “Certified Lover Boy” and Drake, the United States Patent and Trademark Office (“USPTO”) denied his application to trademark the phrase due to its likelihood of confusion with two existing “Loverboy” trademarks.⁶[6]Offc Action Outgoing for Certified Lover Boy, U.S. PAT. & TRADEMARK OFF. (Aug. 22, 2020, 6:32 AM), https://uspto.report/TM/88800272/OOA20200422063520/.

This article covers the legal reasons for the USPTO’s rejection of Drake’s trademark application, the consequences of lacking trademark protection, and potential next steps if Drake’s legal team decides to further pursue a trademark. Drake’s experience implies that fame does not guarantee trademark registration. To avoid a similar problem, musicians should do a trademark search before landing on an album title. Failure to do so may result in a musician’s loss of their market share of profits without a legal cause of action.

DENIED! “Certified Lover Boy” Conflicts with Previously Registered “Loverboy” Mark

Drake’s application listed three planned uses for the phrase: “music recordings; clothing; and television, movies, and live events.”⁷[7]Shawn Setaro, Drake Tried to Trademark His Album Title, But He Forgot About Loverboy, COMPLEX (Aug. 14, 2020) https://www.complex.com/music/2020/08/drake-certified-lover-boy-trademark. However, two other entities own trademarks that the USPTO believes could be confused with Drake’s. The first of these entities is 1980s rock music group “Loverboy.”⁸[8]LOVERBOY, https://www.loverboyband.com (last visited Sept. 16, 2021). The second entity is Lover’s Lane, a Detroit-based retail chain selling “Loverboy” brand of “sexual apparel and romantic gifts.”⁹[9]LOVER’S LANE, https://www.loverslane.com/ (last visited Sept. 16, 2021). In finding a likelihood of confusion, the USPTO applied two key factors: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.¹⁰[10]Offc Action Outgoing for Certified Lover Boy, supra note 6 (applying two of the 13 DuPont Factors in determining likelihood of confusion); Application of E. I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) (establishing 13 factors to consider in determining the “likelihood of confusion”).

When analyzing the marks under the first factor, the USPTO compared “Certified Lover Boy” and “Loverboy.” Although Drake’s mark added the word “certified,” the USPTO determined that the marks were “identical in part” and thus have a “similar commercial impression.”¹¹[11]Offc Action Outgoing for Certified Lover Boy, supra note 6; see also Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022 (C.C.P.A. 1977) (explaining that incorporating the entirety of one mark within another does not obviate the similarity between the compared marks to overcome a likelihood of confusion). The USPTO reasoned that the similar names might lead consumers to believe that Drake’s brand is an extension of Loverboy and/or Lover’s Lane brands instead of separate entities.¹²[12]Offc Action Outgoing for Certified Lover Boy, supra note 6, at 1 (explaining that similarities in appearance, sound, connotation and commercial impression are all taken into consideration, but similarity of only one of the elements may be sufficient to find the marks confusingly similar).

Not only did the USPTO find the marks to be similar, but the similarity in the goods provided by Drake, Loverboy, and Lover’s Lane further adds to the likelihood of confusion. Regarding the goods and services, the USPTO compared Drake’s music, merchandise, and media plans to the goods and services currently offered by Loverboy and Lover’s Lane. Lover’s Lane registered “Loverboy” as a trademark “for garments like thongs, underwear, ‘leather wear,’ and lingerie.”¹³[13]Setaro, supra note 10, at 1. Similarly, Drake planned to stamp “Certified Lover Boy” on clothing, including undergarments, leggings, and yoga pants.¹⁴[14]Id. The similarities in product offerings were too close for the USPTO to grant Drake protection over “Certified Lover Boy.” Policy reasons for this ruling include the strong possibility that a fan of the Loverboy band would see clothing bearing the phrase “Certified Lover Boy” and believe that the merchandise is produced and sold by the 80s rock band, not Drake. This possibility of confusion precludes the USPTO from protecting Drake’s “Certified Lover Boy” phrase. Additionally, Lover’s Lane distributes mail catalogs to subscribers advertising their undergarments, which could add to the confusion.¹⁵[15]See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012).

Drake’s Trademark was Denied. What Now?

Trademark registration “legally prevent[s] others from using the same or a similar trademark for related goods or services without your permission.”¹⁶[16]Trademark Scope of Protection, U.S. PAT. & TRADEMARK OFF., https://www.uspto.gov/trademarks/basics/scope-protection (last modified Mar. 31, 2021, 12:00 PM). Importantly, this prevention extends only as far as the scope of activity identified in the registration.¹⁷[17]Id. Therefore, trademark protection of “Certified Lover Boy” would have prevented others from using this phrase in relation to “music recordings; clothing; and television, movies, and live events” if it had been approved for the uses Drake applied for.¹⁸[18]Setaro, supra note 7, at 1. Absent trademark protection, Drake is without a cause of action under federal trademark law for activity that would otherwise be characterized as infringement.¹⁹[19]What is a Trademark?, U.S. PAT. & TRADEMARK OFF., https://www.uspto.gov/trademarks/basics/what-trademark (last modified Mar. 31, 2021, 12:00 PM). This allows consumers wanting to avoid name-brand Drake prices to seek “Certified Lover Boy” merchandise from third-party suppliers, enables these suppliers to profit, and inevitably undermines Drake’s market share. Lastly, this denial also means that Drake would lack a legal cause of action if another artist were to appropriate the phrase.

Generally, rejected applicants have six months to file an appeal or respond to their USPTO rejection.²⁰[20]1204 Notice of Appeal [R-10.2019], U.S. PAT. & TRADEMARK OFF., https://www.uspto.gov/web/offices/pac/mpep/s1204.html. Given that Drake’s rejection occurred in August 2020, the six month timeframe has passed.²¹[21]See Offc Action Outgoing for Certified Lover Boy, supra note 6. Since there is no information regarding the status of his response, Drake will likely need to begin the registration process again if he decides to take further action.²²[22]Josh Gerben, How to Revive a Dead Trademark, GERBEN LAW FIRM (last visited Sept. 25, 2021) (“If your trademark has fallen into … ‘abandoned’ status, you may petition the USPTO within 60 days of the Notice of Abandonment. After the 60 days have lapsed … you will need to file a trademark application with the USPTO.”). To minimize the likelihood of another rejection, Drake has two options. First, Drake can obtain consent from the owners of the two “confusingly similar” trademarks.²³[23]Trademark Manual of Examining Procedure, USPTO https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e6229.html (last visited Sept. 25, 2021) (explains the process for a successful filing of a Consent Agreement). This may be possible due to Drake’s popularity and wide-ranging connections, which could connect him with the owners of the previously registered “Loverboy” marks. However, if he is unable to obtain consent, he can try to sell other goods and services, or alter the trademark name. Changing the goods is unlikely because Drake consciously planned to sell clothing, and has already begun doing so in partnership with Nike.²⁴[24]Drake Related, https://drakerelated.com/collections/certified-lover-boy (last visited Sept. 16, 2021). He has had successful clothing lines with Nike, Air Jordan, and other companies, and it fits the theme of the album to sell “sexy clothing” with the name of his album on it. Changing the trademark name is also unlikely. Drake has already released the album, so it would not make sense from a marketing perspective to change the name entirely.

Interested parties should continue to monitor the progression of Drake’s pursuit of a “Certified Lover Boy” trademark to see if his team takes further action. It may also be worthwhile to keep an eye on the success of sales of third-party “Certified Lover Boy” merchandise to further gain insight into the impact of the trademark rejection on Drake’s market share.

Written by: Michael Brewster and Kayla Kershen
Michael and Kayla are 2023 J.D. Candidates at Brooklyn Law School