What’s Going on with Pharrell and Chad Hugo?

What’s Going on with Pharrell and Chad Hugo?

Pharrell Williams, one of the 21st century’s most influential music producers and artists, has spent the past year caught up in legal battles—all over trademark disputes.^[1] In June, Pocket Socks Inc. filed a complaint against Williams and Louis Vuitton alleging trademark infringement over the mark ‘Pocket Socks’ for a new line of luxury socks.^[2] Additionally, in recent months, recording artist P!nk, Victoria’s Secret, and Williams’ longtime friend and collaborator, Chad Hugo each filed notices with the United States Patent and Trademark Office (USPTO) opposing trademark registrations filed by PW IP Holdings LLC, one of several business entities owned by Williams.^[3] However, only Hugo’s opposition notice remains active, though proceedings are currently suspended for 90 days while the parties negotiate a possible settlement.^[4]

Williams is no stranger to intellectual property litigation. In 2018, the Ninth Circuit controversially upheld a jury verdict finding that Williams and Robin Thicke’s “Blurred Lines” infringed upon Marvin Gaye’s “Got to Give It Up”.^[5] However, Williams’ dispute with Chad Hugo does not involve infringement, but alleged trademark registration fraud.^[6]

Williams and Hugo are each half of the songwriting and production duo ‘The Neptunes,’ whose name is the reason for the dispute.^[7] The two met at twelve years old at a summer camp for musicians.^[8] Together as The Neptunes, they rose to prominence in the early 2000s and were inducted into the Songwriters Hall of Fame in 2022.^[9]

Williams filed three trademark registrations for ‘The Neptunes’ with the USPTO in December 2022: one in Class 38 for streaming music and videos, one in Class 41 for live performances, and a third in Class 009 for downloadable music videos.^[10] These registrations were subsequently published in the Trademark Official Gazette (TMOG) in early January 2024.^[11] This public notice allowed Hugo to file a notice of opposition to all three registrations with the Trademark Trial and Appeal Board (TTAB), an administrative court within the United States Patent and Trademark Office (USPTO) empowered to adjudicate opposition and cancellation proceedings and determine whether a party has a right to register a trademark.^[12]

Hugo’s attorney, Kenneth D. Freundlich stated in the opposition filing that Hugo owns 50% of ‘The Neptunes’ and that for over thirty years Hugo and Williams have agreed to divided all assets equally.^[13]  Freundlich further claims that Williams acted fraudulently and in bad faith by failing to include Hugo as a co-owner of the trademarks.^[14]

Hugo has also filed a Petition for Cancellation for two previously registered marks for ‘The Neptunes’ under Class 9 for audio-visual recordings, citing the same grounds.^[15] Freundlich also points out that the Hugo does not appear in one of the specimens originally submitted by Williams.^[16] The original specimen for Registration No. 7164541, which was rejected, displays only an image of Williams on the Spotify webpage with Hugo cropped out.^[17]

A representative for Williams has stated that Hugo’s team was contacted to share in the ownership and administration of the mark and that the intention behind the registration applications was to ensure that Williams and Hugo would share ownership of the mark and to prevent a third party from claiming it.^[18] In the streaming era, where music royalties are often distributed inequitably or not at all, trademarks have become an essential, lucrative form of intellectual property for musicians.^[19]

It seems plausible that Williams intended to secure ‘The Neptunes’ trademark for himself and Hugo to own and monetize before a third party did. Federal registration is not required to receive trademark protection, but it is highly preferred as it affords an owner stronger rights.^[20] Importantly, federal registration allows a mark to become “incontestable” once specific requirements are met—including continuous use for at least 5 years following registration—making it very difficult for anyone to bring forth infringement claims once this status is attained.^[21]Under both common law and the federal Lanham Act, trademark protection is granted to the first party to use a mark in commerce.^[22] However, being the first to register a mark can be crucial once it becomes incontestable.^[23]

It is unclear why Williams filed for trademark registration without according Hugo his 50% share. However, Hugo’s opposition filing claims that Williams not only acknowledged Hugo as an equal co-owner, but that assigning Hugo his share was conditioned upon ‘onerous business terms’ that would limit Hugo’s control and ability to receive compensation from the trademarks.^[24] These terms have not been made public, but Hugo contends that they violate the duo’s agreement to split everything equally.^[25]

Currently, the opposition proceedings have been on hold since May, following three consecutive granted Motions for Suspension for Settlement filed by PW IP Holdings, LLC.^[26] The most recent suspension is set to expire on January 31, 2025, at which point proceedings will resume if the parties cannot reach a settlement agreement.^[27]

PW IP Holdings has also filed a third Motion for Suspension for Settlement at the beginning of this month to pause cancellation proceedings.^[28] It’s likely Williams and Hugo will be able to resolve the dispute without the TTAB as approximately 95% of trademark opposition and cancellation proceedings are settled before trial.^[29] If the parties privately resolve the dispute without the involvement of TTAB, we likely will never know why Williams failed to include Hugo in the registrations.^[30]