By UpCounsel Attorney Liz Oliner
Don’t think of messing with Sasha Fierce – or the real Beyoncé. Celebrities and big name companies are aggressive about defending their brands, which are their livelihoods. And trademark law gives them protection not just from flat-out copies and imitators, but also from logos or names that are similar enough to be confused for the real thing.
Example 1: Beyoncé vs. Feyonce, Inc.
Beyoncé recently filed a lawsuit against Texas entrepreneurs running the online business www.feyonceshop.com (which sells clothing and merchandise with slogans that read “FEYONCE” and “HE PUT A RING ON IT”). The Texas company is also the owner of two pending trademarks for variations of “FEYONCÉ” and “FEYONCE.”
The examiner at the USPTO who reviewed the trademarks issued an office action (basically, a preliminary refusal) stating that these trademarks are too similar to those already owned by Beyoncé. Celebrities and big name companies are aggressive about defending their brands.
Celebrities and big name companies are aggressive about defending their brands.
Beyoncé is a savvy entrepreneur, and has built a brand around her mega pop star status. She owns multiple trademark registrations that protect her name in connection with clothing and other merchandise that she sells to her fans. She is not amused by the Feyoncé products.
In a lawsuit filed in New York, Beyoncé alleges the Texas entrepreneurs deliberately chose a name that is confusingly similar to her own name, and that the company has intentionally capitalized on the popularity of her hit song, “All the Single Ladies.” If she wins the lawsuit, the Texas company will not only have to shut down its shop, but it could also be liable for damages.
Three Takeaways from the Beyoncé Case
1.) If you are creating a new business, it’s almost never a good idea to capitalize on a celebrity’s name or lyrics. Trademarks have become very valuable in the entertainment industry. Celebrities can make more money from merchandise bearing their names and lyrics than from record sales. A trademark isn’t only infringed when a business uses the same name as another.
A trademark isn’t only infringed when a business uses the same name as another.
2.) Trademark infringement doesn’t just occur when a person or business uses the exact same name as another. The standard used to determine if trademark infringement has occurred is known as the “likelihood of confusion,” which means that names that look or sound similar to an already-protected trademark can still be considered to be infringing.
3.) Before filing a trademark or launching a website, consult with a trademark attorney to review potential risks with the name or names you plan to use. It’s critical to do this before you spend the time and money to build a brand that could be problematic – one that, if it infringes another brand, could cause major financial damage to your business.
Example 2: Adidas’s Stripe-Sneaker Design Victories
Recently, Adidas has been successful in blocking Skechers, a competitor, from selling sneakers with a three-stripe design. Famous brands have stronger rights than small companies and a greater ability to enforce their trademarks.
Famous brands have stronger rights than small companies and a greater ability to enforce their trademarks.
Adidas, which owns a trademark protecting its famous stripe designs, alleged that Skechers’ three-stripe design was confusingly similar to Adidas’s registered trademark. Adidas argues that consumers seeing Skechers shoes might be confused into believing that the shoe was manufactured by, endorsed by or affiliated with Adidas.
Adidas has been even more successful in Europe than in the United States. The EU held that a two-stripe sneaker design created by a Belgian footwear company, Shoe Branding Europe BVBA, infringed on Adidas’s three-stripe design. It determined that the difference between two and three stripes (as well as other minor differences) weren’t actually different enough to prevent trademark confusion.
Three Takeaways from the Adidas Case
1.) Fashion companies’ designs can be trademarked. Don’t create “knock off” brands that include design elements resembling those of famous companies.
2.) Famous brands have stronger rights than small companies do and a greater ability to enforce their trademarks, because consumers have come to recognize these brands over time. Famous brands also have the right to prevent “dilution” of their brand.
3.) Like celebrities, famous brands also have the means to file lawsuits. Typically, smaller and newer businesses don’t have the resources to fight back, especially when they need to focus on growing their businesses rather than deal with litigation.