Robert Diggs, otherwise known as RZA, filed the opposition earlier this month, arguing that he would be “damaged by the issuance of a registration for the trademark Woof-Tang Clan”.
The opposition explained that the Woof-Tang Clan trademark was “highly similar” to the Wu-Tang Clan trademark in “sight, sound, and commercial impression”.
It added that the Wu-Tang Clan trademark was “unmistakably associated” with RZA, “such that it constitutes part of his identity”.
As well as dog walking services, Woof-Tang Clan’s owner, Marty Cuatchon, was also selling t-shirts depicting dogs on hip-hop album covers through his website wooftangclan.com. These have since been removed.
Catherine Howell, associate solicitor at law firm EIP, commented that the case could evolve into a copyright action as Woof-Tang’s merchandise included images made from adapted Wu-Tang Clan album covers.
She said: “These trademarks are incredibly similar, and it is clear (not least due to the Woof-Tang Clan’s references to Wu Tang) that the woof tang name has originated from the Wu-Tang Clan.”
Howell added: “Woof-Tang Clan would probably be the ‘underdog’ in this trademark opposition case, as it’s fair to assume RZA will have more money and specialised lawyers to act to protect the Wu Tang Clan trademark.”
“This just goes to show that although it may be funny and grab some attention to use a parody of a famous brand name/band name; but if you get the attention you want from using these kind of names, it is likely that the famous brand name will swoop in to defend itself (understandably as so much value is attributed to a brand).”