The story goes, that back in the 70s, a small band of guys somewhere in Northern California used to smoke so much, that a housemate suggested they just call themselves Doobie Brothers.[1] Four decades and 40 million albums later, the name stuck.[2]
So when a folk-rock cover band named Doobie Decimal System appeared this year, the Doobie Brothers were none too happy.[3] In July, a lawsuit was filed by the Brothers alleging trademark infringement through the use of the term “Doobie” by the cover band. The lawsuit notes that the Doobie Brothers had already trademarked their name and the term “Doobie” for musical performances back in 1982.[4] The case further stated that new cover band was going to be their direct competitor by performing music of the same time frame during their shows.[5] Also mentioned were concerns that the size of the term Doobie in relation to the rest of the cover band’s name was going to confuse to the consumer.[6]
Cases like this are not unusual in the music industry, particularly with the amount of money at stake with name recognition for a band. Yet this particular suit presents another challenge for the plaintiff, Doobie Brothers. As the case progresses, the question will inevitably arise, is the term “doobie” even protectable through trademark?[7] The term “Doobie” has been around for a while and generally used as a slang term for a marijuana cigarette.[8] Depending on the source, the first recorded use of the term “doobie” goes back to either 1967[9] or maybe even the children’s television show in the 50s called Romper Room.[10]
Arguably, the word “doobie” may have long ago entered common use sufficient enough to prevent any associated trademarks from being valid.[11] A concerning development that other big brands with all-too-recognizable names never let slip from their mind, given the potential costs related to the loss of the rights. In the words of the Toho. Co., Ltd. attorney Aaron Moss, who looks over the use of the term “Godzilla”:
“As a trademark owner, one of the requirements is to police your mark to ensure that it does not become generic, that it does not become a common [word]. If you don’t, the trademark becomes devalued and hard to enforce.”[12]
Only the court can say for sure whether that devaluation has happened here for the use of the word “doobie” or maybe even already existed back in 1982. So time will tell what all this means for the trademark owner, Doobie Brothers. However, if nothing else, the case serves as a good reminder for trademark owners to stay actively watchful throughout and make sure that their rights today are the same as their rights tomorrow.