The business enterprise of James Stephen “Jimmy “Donaldson—better known as YouTuber MrBeast—has been sued for trademark infringement and unfair competition by Spalding-parent company Russell Brands over the sale of basketballs and footballs bearing the mark of “The Beast.”

In a complaint filed on Tuesday in a Kentucky federal district court, Russell stresses that the U.S. Patent and Trademark Office registered their mark for “The Beast” for the sale of basketballs—including Spalding’s “The Beast” basketball—basketball equipment, basketball accessories and other items. Registration means Russell has presumption of ownership, the opportunity to license the mark, exclusive right to use the mark and anti-counterfeit protections from U.S. Customs and Border Protection. 

Russell, which was acquired by Fruit of the Loom in 2006, obtained USPTO registration in 2003. Russell underscores that its marks “are valuable intellectual property.” It also asserts it invested a “substantial” amount of time, money and effort” to promote goods bearing the Beast mark and to gain “widespread popularity and renown among the applicable consuming public.” In addition, Russell says its Spalding division “is the largest basketball equipment supplier in the world.”

Image from complaint.

Image from complaint.

Enter Donaldson, who, the complaint stresses, has “hundreds of millions of subscribers” on social media and “has generated tens of billions of views for his online endeavors.” As of this writing, Donaldson’s MrBeast channel is the world’s most subscribed channel on YouTube, with 422 million subscribers. In fact, there’s a healthy gap of about 121 million subscribers between MrBeast and the second most-subscribed YouTube channel, the India-based T-series (301 million subscribers). MrBeast also sells various merchandise, including basketballs, as well as toys, candy, apparel and school supplies through the MrBeast online retail store and Amazon, Shopify and Walmart’s marketplace seller.

Last year, Russell sent a letter to MrBeast objecting to the use of a “virtually identical mark as Russell’s The Beast mark” in connection with the sale of basketballs. Negotiations failed to yield a resolution and MrBeast continued to sell the balls. In February, Russell sent another letter, demanding that MrBeast discontinue the sale of basketballs and related goods with the marks “Beast,” “The Beast,” “MrBeast” or “any confusingly similar variations thereof.” 

Image from complaint.

Although Russell says a representative of MrBeast indicated the sales would stop and that by May the MrBeast online retail store no longer sold the balls in question, Russell says the “infringing balls” were still on display on the MrBeast Amazon page and a non-indexed page on the online retail store. 

The complaint, which was authored by attorneys Carrie A. Shufflebarger and Brianna D. Vollman of Thompson Hine, references further communications between the companies in June. As Russell tells it, an attorney for MrBeast provided updated sales information and additional assurances that basketballs with the Beast trademark have been removed. But Russell says discussions didn’t lead to a settlement and contends the basketball is still visible, even if not available for sale, on Amazon and Shopify. 

Russell demands an injunction from the court to bar MrBeast from further sales of the products bearing the trademarks. It also wants monetary damages that would include MrBeast’s profits associated with the sale of basketballs, footballs and other sports equipment, along with attorneys’ fees and other costs.

Russell asserts the alleged use of its marks is likely to cause confusion because they are “identical,” or “functionally identical” and are “confusingly similar in sight, sound and overall commercial impression.” MrBeast also allegedly uses “Beast in connection with sports balls” in a way that “encroaches on the channels of trade and customers with which Russell has used Russell’s The Beast mark.”

Attorneys for MrBeast will answer the complaint in the coming weeks, deny the allegations and seek the dismissal of the lawsuit. Given that the two sides have been in communication about their dispute for over a year, MrBeast will be prepared with defenses. 

One likely defense is fair use, meaning its use of Russell’s mark doesn’t rise to infringement. To that end, MrBeast might argue his businesses’ usage of the word “Beast” is sufficiently different in style and purpose and is unlikely to mislead or confuse consumers as to whether the products are offered by him or Russell. 

It’s possible the two sides will end the litigation via a settlement. The complaint references multiple attempts at resolving the dispute out-of-court, and the two sides might land on an arrangement that works well enough for each. For instance, MrBeast could pay Russell to license the mark or agree to share some of the revenue. There are a variety of possibilities and are ultimately about how much money each will get.

Russell Brand, LLC v. Beast Holdings LLC et al has been assigned to U.S. District Judge Greg N. Stivers.