DigitalMix Calls Out Deloitte for Infringement on Company Trademark
SOUTH SALEM, N.Y. (August 22, 2018) – Online music licensing and tech services company DigitalMix™ has issued a strong response to what it maintains is the illegal theft of its company name by multinational conglomerate Deloitte.
DigitalMix took formal ownership of the trademark to their name in 2003 and awarded the trademark anew in 2018, having registered it with the U.S. Patent and Trademark Office (USPTO). The company has maintained and used the trademark in the course of regular commerce ever since.
In 2018, through Deloitte-issued press releases, it came to the attention of DigitalMix president Vince Castellucci that Deloitte had begun using the DigitalMix name to refer to a new suite of its own business software, without permission from the longtime owner of the trademark. Moreover, Deloitte had taken it upon itself to apply a trademark symbol (™) to the DigitalMix name on its website without ever having filed to register the trademark with the USPTO.
DigitalMix cites case law establishing that their having used the company name under registered trademark for 15 years before Deloitte absconded with the brand under a feigned trademark clearly gives their company stronger legal standing in any dispute over the DigitalMix name.
“Trademark rights are based on use of a mark in commerce, and first user of a mark has superior rights over any subsequent user,” says Wallace E.J. Collins III, Esq., counsel for DigitalMix. “Here DigitalMix was the first user of the mark, and its Federal trademark registration of the DigitalMix mark grants it additional legal rights over Deloitte as a subsequent user of the mark. Thus, in the event of legal action, DigitalMix would be in the superior position over Deloitte.”
Outside of cease-and-desist letters sent to Deloitte by DigitalMix through attorneys, further legal action is pending at the election of DigitalMix.
In response to the letters from DigitalMix, Deloitte claims that the law allows an exception to the trademark when two entities use the same mark in different categories of trade, but DigitalMix counters that this exception only applies to trademarks that resemble words in common English usage, not to stylized made-up brand names. It is the additional position of DigitalMix that their technology also crosses over to those Deloitte espouses they deploy autonomously.
“Their position, as Deloitte erroneously claims, is that their use of our name doesn’t violate the law because they are using it for services in an entirely different industry,” says Castellucci. “That might hold water if the name were a word appearing in a dictionary; for example, the word ‘Universal’ as in ‘Universal Tire and Brakes’ versus ‘Universal Records.’ However, the name DigitalMix is a uniquely created brand name; one you won’t find in a dictionary. We devised the brand for our company, and the PTO grant is clear on this matter. In this regard the USTO is clear that the brand name stays with our trademarked company.
Further DigitalMix is waiting for affirmative closer in this matter in order that they can update their site and deploy DigitalMix 2.0 to add greater functionality and additional features within their music and entertainment licensing, processing and accounting technology. The closure of this matter will circumvent “confusion in the market” and direct DigitalMix users to the proper site and not have users think DigitalMix is part of Deloitte whereby DigitalMix is losing business and opportunities to grow.
DigitalMix is a small firm based in downstate New York offering music licensing and royalty accounting services through its website, DigitalMix.com. Deloitte is the largest professional services network in the world, the biggest of the “Big Four” multinational networks of its kind.