By Scott Hervey
On October 31, 2005, adult film actress Mary Cook filed a trademark registration application with the United States Patent and Trademark Office to register the mark MARY CAREY for motion pictures featuring adult entertainment, and a series of prerecorded video cassettes, DVDs, multimedia software and interactive multimedia featuring adult video and visual dramatic performances. On August 29, 2006, the USPTO published the mark in the Official Gazette, beginning the thirty day period in which any third party who believes that they would be damaged by the registration of the mark could oppose its registration. If no opposition is filed within the thirty day time period, the USPTO will usually register the mark. However, on December 27, 2006 pop star diva Mariah Carey, through her company Automatic Princess Holdings, LLC, filed an opposition to the registration of the porn star’s mark, MARY CAREY, claiming that consumers are likely to be confused and believe that there is some association or affiliation between the MARIAH CAREY marks owned by the pop star and MARY CAREY.
In determining the outcome of the pop star’s claim, the Trademark Trial and Appeals Board will first review the record and any evidence submitted to determine who has priority use. Most often this is a relatively easy task since the parties usually allege dates of first use when filing their trademark applications. If the porn star were to have first used her mark prior to the pop star, the porn star would have priority and the pop star would not have grounds to oppose the registration of the porn star’s mark. In her pleadings, the pop star claims ownership of four registered trademarks, all for the mark MARIAH CAREY. The earliest claimed first use date for these marks is June 8, 1990 for prerecorded phonograph records, audio and video cassettes, compact discs, all featuring music. The porn star claims March 1, 2003 to be the date of first use of her trademark.
While the pop star may have grounds to oppose the registration of the porn star’s mark, the pop star still must prove likelihood of confusion. In order to do so, the pop star must establish (i) that the marks are similar in appearance, sound, connotation, and commercial impression; (ii) that the goods and services as described in the registration are related; (iii) that the channels of trade through which the goods travel are similar; and (iv) that the goods are marketed to overlapping groups of consumers.
The Court of Appeals for the Federal Circuit stated “the basic principal in determining confusion between marks is that the marks must be compared in their entireties and must be considered in connection with a particular goods or services for which they are used. It follows from that principal that likelihood of confusion cannot predicate on the section of a mark, that is, not only part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been giving to a particular feature of a mark provided the ultimate conclusion rest on consideration of the mark in their entireties. Indeed, this type of analysis appears to be unavoidable.” In re National Data Corp. 753 Fed.2d 1056 (Fed. Cir. 1985). In another case, the Federal Circuit stated “there is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather whether there is a likelihood of confusion as to the source of the good.” In re Shell Oil Co. 992 Fed.2d 1204 (Fed. Cir. 1993).
In the case of the pop star versus the porn star, the pop star will likely convince the Trademark Trial and Appeals Board that the marks are similar in appearance sound and meaning. Both marks share the formative “CAREY” and likewise, both marks begin with the same letter. As a result, both marks sound and appear similar. However, where the pop star may have difficulty is in establishing the relatedness of the goods covered by the pop star’s applications and the porn star’s applications.
The determination of whether goods or services are similar is a factual question. In re i.e. DuPont DeNemours and Co. 476 Fed.2d 1357 (CCPA 1973). Legal precedent holds that the facts in each case and the weight to be given to each factor may be different in light of varying circumstances, and there can be no rule that certain goods or services are per se related such that their may be a likelihood of confusion from the use of similar marks in relation thereto. Rather, the determination of similarity between marks is never in the abstract but rather, its focus must always be on the marketplace. The only relevant evaluation of likelihood of confusion is that made in the marketplace. Therefore, if the goods or services are not marketed in such a way that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.
Here, the pop star owns trademark registrations covering the following goods and services: audio recordings; posters and musical tour booklets; clothing; entertainment services in a nature of singing performances by an individual; website featuring musical sound recordings and other merchandise; and music videos, ring tones, and calendars. On the other hand, the porn star’s application covers motion pictures covering adult entertainment, and adult DVDs. While music videos and adult films may be somewhat related, the pop star will have to show that a significant group of consumers who encounter the porn star’s mark would believe that the goods covered by the mark are somehow related to, originate from, or are endorsed by the pop star.
It is true that the goods or services do not have to be identical or even competitive in order for there to be a likelihood of confusion. The relevant inquiry is whether the goods are related, not identical. The Trademark Trial and Appeals Board has made it clear that the issue is not whether the goods would be confused with each other, but rather whether the public will be confused about the source. However, if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. As such, in order to prevail on her claim, the pop star will have to establish that there is a significant overlap between consumers who purchase her records, posters, clothing items, and those consumers who purchase the adult films featuring the performance of the porn star.
Scott Hervey is a shareholder with Weintraub Genshlea Chediak Tobin & Tobin and practices in the firm’s technology and corporate sections. Scott’s practice primarily involves assisting companies in commercializing and protecting their intellectual property assets. Scott’s clients range from software companies to film production companies to digital content aggregators. For additional articles on IP law, visit www.theiplawblog.com.