Famous trademarks are treated like trademark royalty and have broad protection against similar trademarks used on both related and unrelated goods and services.
For example, a winery applied for USPTO trademark registration of the term “PINK FLOYD” for wine and was refused registration because:
the applied-for mark consists of or includes matter which may falsely suggest a connection with PINK FLOYD the music group. Although PINK FLOYD is not connected with the goods and/or services provided by applicant under the applied-for mark, PINK FLOYD is so famous that consumers would presume a connection.
The USPTO’s refusal to register the applied-for PINK FLOYD trademark for wine includes a four-part test used to evaluate the existence of a false connection:
The following is required for a showing of false connection under the Trademark Act Section 2(a)[in the U.S.]:
- The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution;
- The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
- The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and
- The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.
This is one example of the broad protection granted to famous trademarks. (Find another way to pay tribute to a favorite band or music group).
BY: Vanessa Kaster, Esq., LL.M.
See also: a copy of the USPTO’s final office action for the PINK FLOYD application above [Serial No.77588367]; an earlier post on new business trademarks at http://wp.me/p10nNq-B; an INTA fact sheet on Famous and Well-Known Marks at www.inta.org; earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a link to U.S. Federal Trademark Law at www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.