Rapper 6ix9ine has lost the right to trademark his own stage name.
A South Carolina recording artist named Warren Hamilton claims he has been using the rap alias “SIX9” while performing since 2007. He says that 6ix9ine (born Daniel Hernandez) has hurt his career since 2017 when Hernandez began using his similar stage name.
Hernandez submitted an application for the 6ix9ine mark in class 25 for Clothing and class 41 for Entertainment Services in 2020.
As shown above, he has the numbers “six” and “nine” tattooed on his forehead.
Hamilton filed a Notice of Opposition with the Trademark Trial and Appeals Board (TTAB) in July. Hamilton’s lawyer tried to work with Hernandez’s lawyer but couldn’t reach him until August. Hernandez’s lawyer reported that he’d had a heart attack
Hamilton also sued Hernandez for alleged unfair competition and trademark infringement, saying
If a DJ on the radio or a playlist or podcast announces that this is a song by SIX9 or 6ix9ine, the average consumer doesn’t know by the announcement of the artist’s name if that song is going to be by Hamilton or Hernandez since each mark has the same exact pronunciation and meaning.
As the complaint notes, to prevail on a trademark infringement claim the trademark owner must prove two elements:
- That the trademark is valid and entitled to protection, and
- That the contested use of the trademark is likely to cause confusion among consumers.
Consumer confusion is often evaluated using the so-called “Polaroid factors”:
- the strength of the plaintiff’s mark;
- the degree of similarity between the two marks;
- the proximity of the products;
- the likelihood that the owner will bridge the gap;
- evidence of actual confusion;
- defendant’s good faith in adopting the mark;
- the quality of the defendant’s product; and
- the sophistication of the consumers. will likely cause confusion with the plaintiff’s mark.
Hamilton tried to serve legal papers on Hernandez but had a hard time doing so. In October, Hernandez’s now-former attorney said that he no longer represented him, that he didn’t know how to contact him, and that his former client didn’t have an email address.
(The lawyer also noted that Hernandez owes his firm $400,000 in legal fees.)
In recent months, Hernandez was spotted in various locations. In Dubai, he was reported to have gotten into a fight with a DJ who wouldn’t play his music. His social media post trolling imprisoned WNBA player Brittney Griner stated he was in Russia.
Hamilton sought permission from the court to serve Hernandez via his probation officer, and this was granted.
Eventually, the TTAB issued an order sustaining the opposition to the trademark based on Hernandez’s failure to respond to the Notice of Opposition and Hamilton’s motion for default.
Hernandez is no stranger to intellectual property disputes. Earlier this year he settled a copyright infringement suit by Beatdemons over his 2020 single “Gooba,” which was claimed to copy the melody, structure, and overall composition of their 2018 song “Regular.”
As Complex reported,
Released in May 2020, “Gooba” marked the first track 6ix9ine dropped after he arrived home from prison that April. Debuting at No. 3 on the Billboard Hot 100, the track scored the biggest 24-hour debut for a hip-hop video in YouTube history and has since amassed 780 million views on the platform.
Reportedly, Hernandez initially worked under the name Tekashi69, but modified the name after a 2015 conviction on one count of “use of a child in a sexual performance.”
Hernandez previously challenged a rival registration for the TEKASHI69 trademark.
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