12:47pm PT by Eriq Gardner
Vice v. Virtue: Best Trademark Lawsuit Ever?
A judge has been tasked with figuring out whether people will confuse Virtue with Vice in this age of prevalent marketing.
This past week, the growing Vice Media went to court against the much smaller company, Virtue Marketing. According to a complaint asserting common law trademark infringement and unfair competition in Georgia federal court, Vice owns "Virtue," and so Virtue will have to be considerate by changing its name.
Some might figure Vice's legal wrath to be a point of greed, but since 2006, Vice brags it has been using Virtue as the moniker of its in-house creative, advertising and marketing agency. "Vice named its advertising agency Virtue in order to play off of the Vice name (i.e., a virtue is the opposite of a vice, and the agency extols the virtues of its advertisers)," explains the lawsuit.
Vice is a bit vain when it comes to its Virtue.
The 1,200-employee media company does everything from producing an HBO show to making films, but Vice says it is "incredibly successful" when it comes to marketing. "While Vice has an audience of all ages, it has made particular in-roads with the coveted but often hard to reach 18-34 year old demographic," states the lawsuit, naming clients like AT&T, Intel, Unilever and Coca-Cola as coming to Vice's Virtue for help in selling goods. "Virtue Worldwide has been the subject of much media attention."
Meanwhile, Virtue — the one that doesn't belong to Vice — has allegedly grown envious and reckless.
Upon getting a cease-and-desist letter in January, Virtue then "filed two United States trademark applications in bad faith," charges the lawsuit.
Vice apparently was untrustworthy in making its claims.
A second cease-and-desist letter was sent in February and third in April, and Virtue argued that it is “unclear” why Vice believes it has ownership over Virtue.
Vice says it attempted to explain that priority of use trumps registration — Vice didn't file a trademark application for "Virtue" until 2014 and it's subject to Virtue's opposition — but it hasn't amounted to any compassion from Virtue.
Vice now demands an injunction against Virtue from "causing a likelihood of confusion or misunderstanding as to Defendants’ affiliation, connection or association with Plaintiffs and any of their advertising or marketing services."