Mary Carey trademark update

I earlier wrote about the trademark issues between Mary Carey and Mariah Carey. Mary Carey (the porn star, not to be confused with Mariah the singer) appeared on the Howard Stern Show on Sirius (yes, I am a subscriber). The issue of the trademark dispute came up, and everyone wondered how the dispute could actually exist- in that they sound different, do different types of entertainment, etc. All of which agrees with my earlier article. A "patent attorney from Pittsburgh" called in and said that under a likelihood of confusing test, where the marks are compared, they are confusingly similar.

It appears that our esteemed patent attorney missed the doctrine of laches. That basically states if you wait too long to bring a claim, you lose the right to do so. IMHO, Mariah Carey has waited too long to lodge any complaints. Mary Carey has been really big in the news for at least 3-4 years, in porn as well as the gubernatorial elections here in California. I even recall seeing a picture of Mary Carey promoting the re-election of President Bush in 2004, using her porn name.

Mary, who may have been drinking a little for the show, also claimed that she got the name "Carey" because of her crazy antics- like that of Jim Carey. I'm not sure if that argument will fly, but they point out many porn star names that are similar to those of other famous people- such as Arnold Schwartzenpecker- so Mariah may be a little late getting to the "stop Mary Carey" party.

More details as this case develops....

Police to reunite? Check the USPTO

I'm a big fan the the band The Police, and have been reading a bunch of stories recently about how they may perform at the Grammys, which is just a prelude to them reuniting for a tour. Today it was confirmed by the Grammys that yes, the Police will perform at the Grammys.

My guess is that they will also go on tour afterwards. My reason? They filed a nice trademark application on January 4, 2007, covering a wide range of goods and services. Tellingly, part of the goods/services are for "use in commerce," since the early 80s, such records and clothing-- whereas other goods/services are "intent to use," such as tour programs and live musical performances. The full listing is:

Class 9:
Records, audio tapes, video tapes, compact discs, and DVDs, all containing music.
FIRST USE: 19770600. FIRST USE IN COMMERCE: 19790000

Class 25:
Clothing, namely, t-shirts;; Clothing and footwear, namely, bandanas, caps, hats, belts, headbands, jackets, jerseys, sweatshirts, shirts, pants, shorts, shoes.
FIRST USE: 19791200. FIRST USE IN COMMERCE: 19810200

Class 14:
Decorative pins, jewelry, watches
Intent to use

Class 16:
Tour programs, posters, stickers, pens, stationery
Intent to use

Class 21:
Coffee mugs, glasses, beverageware
Intent to use

Class 41:
Entertainment services, namely, live musical performances
Intent to use

The full trademark application is online at:

THE POLICE

Now it is entirely possible that the Police filed this to protect their existing marks, but at $325 per class filing fee, that's a bunch of money to spend on covering tours and promotion if you're not planning on using it. While this is not proof positive that they're going to tour, I'm certainly optimistic. Hopefully they do tour, and I get to see them here in LA.

Trademark use in commerce- make sure it's legal

A common, and well known, rule in trademark law is "first use." I advise all clients, even if they cannot afford to file a trademark application, to start using their trademark in commerce as soon as possible. In the United States, trademark rights accrue upon use in commerce (for those that really want to know, 'use in commerce' refers to the U.S. Constitution, Article I, Section 8, Clause 3 , which allows the U.S. Congress "To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.") More on "use in commerce" in a later article.

This first use rule holds that the first person or company to start actually using the mark with their good or service, in commerce, is the superior trademark holder. This can become an issue when two entities are using similar marks for similar services around the same time. The eventual winner is the one that used the mark first, and then continually, in commerce.

The Ninth Circuit Court of Appeals (the federal courts that covers much of the Western States) has just issued a ruling in the case of CreAgri, Inc. v. USANA Health Sciences, Inc. This case states:

In a contest involving competing products claiming trademark priority, the district court determined, in order to acquire priority, a "use in commerce" means a lawful use- here, a use compliant with federal labeling requirements. [District court ruling upheld]

In this case, the parties were concerned regarding first use in commerce over a trademark. It turns out (to make a long story short) that one party had been using a trademark with a nutritional supplement product that was not fully compliant with Food and Drug Administration labeling requirements. The court held, and this court of appeals upheld the decision, that the prior use in commerce, not complaint with the law, was invalid. The court only will consider lawful use in commerce when determining trademark use priority.

This is somewhat significant, in that nutritional supplements are really widespread. In the Nineties, regulations regarding nutritional supplements were relaxed, hence those lovely small print warnings we see for many "supplement" products to "treat" conditions (e.g. "the accuracy of claims have not been verified by the FDA"). Turns out that in addition to being potentially dangerous to individuals, these products cannot claim rights to a mark- unless they comply with the law.

Some might think this is common sense, but there is such a volume of nutritional supplements out there (some of which I have tried) that the noise of the claims can sometimes overwhelm the actual efficacy of the product itself. I think this is certainly a step in the right direction, in recognizing that a product not compliant with the law should not be allowed to claim stronger trademark rights. If a product does what it claims, then it should certainly be stated, verified, and then the product will sell on its own right.

The full text of this decision is available here: CreAgri, Inc. v. USANA Health Sciences, Inc., citation TBD (9th Cir. 2007)