Last updated on June 9th, 2020
My dad would be so happy to see his alma mater linked on my site!
And I’m not playing favorites. Because this 2010 Stanford Law Review article on Irrelevant Confusion, besides entertaining (in a sickening way), provides examples to help creatives understand why infringement is a big deal, and why a Likelihood of Confusion refusal often stops trademark applications from being registered.
Here are some brief excerpts, each preceded by my non-jargon summary:
The designer who created spin-off products (parodies) of an already famous brand was forced to stop:
The Mutual of Omaha Insurance Company persuaded a court to stop Franklyn Novak from selling T-shirts and other merchandise bearing the phrase “Mutant of Omaha” and depicting a side view of a feather-bonneted, emaciated human head.19 No one who saw Novak‟s shirts reasonably could have believed Mutual of Omaha sold the T-shirts, but the court was impressed by evidence that approximately ten percent of all the persons surveyed thought that Mutual of Omaha “[went] along” with Novak‟s products.Irrelevant Confusion, P419
Even if you think there’s obviously no connection, the courts have ruled consumers might logically assume a connection, or implied approval of the main brand:
The Heisman Trophy Trust prevented a T-shirt company called Smack Apparel from selling T-shirts that used variations of the word HEISMAN, such as “HE.IS.the.MAN,” to promote particular players for the Heisman Trophy.22 This was not Smack Apparel’s first trademark lesson: a court previously ordered it to stop selling T-shirts that used university colors and made oblique references to those universities” football teams because the court believed the designs created “a link in the consumer‟s mind between the T-shirts and the Universities” and demonstrated that Smack Apparel “inten[ded] to directly profit [from that link].”Irrelevant Confusion, P419-420
It doesn’t matter if the famous brand is in a different industry:
Respect Sportswear was denied registration of “RATED R SPORTSWEAR” for men‟s and women‟s clothing on the ground that consumers would be confused into thinking the Motion Picture Association of America sponsored the clothes.24Irrelevant Confusion, P420
If your product reminds the consumer of a famous brand, the court assumes consumers will think the famous brand approves of what you’re doing:
…the theory in all of these cases was that consumers would think there was some relationship between the trademark owner and the defendant based on the defendant’s use of the trademark.Irrelevant Confusion, P422
One mistake that I’ve seen creatives make repeatedly on their trademark applications (aside from trying to register questionable trademarks) is the failure to perform an adequate search on USPTO’s database. This is something that happens frequently, even with a trademark attorney assisting in the filing process. It’s why I want to create training materials to make “due diligence” searches easier for non-techies. Let me know if this is something that interests you in the comments below or on my Facebook business page.