Fenwick trademark litigation partner Eric Ball spoke to Bloomberg Law about cases involving individuals confronting their famous family members over trademark rights to the family name, including a dispute involving pop star Rihanna and another involving conservative activist Phyllis Schafly.
Family feuds frequently arise in trademark law, Ball told Bloomberg Law, highlighting a few factors that may come into play in such cases.
Establishing a misleading association with an individual can be enough to block use of a surname mark, Ball said. The various state laws around right of publicity may also come up.
Ball noted that anti-dilution trademark law also gives owners of famous marks that are widely known to the public the opportunity to prevent dilution or tarnishment of their brand, even if the similar marks occupy different industries.
However, that tarnishment protection may not withstand a Supreme Court challenge, Ball said. He cited the Supreme Court’s 2017 decision in Matal v. Tam which invalidated a ban on disparaging trademarks and forced the USPTO to register “The Slants” to an Asian-American band.
Ball said he expects a similar outcome in Iancu v. Brunetti, another case currently pending in the Supreme Court, which may do away with the ban on “immoral or scandalous marks” despite the USPTO’s request to let it block “FUCT” as a clothing mark.
The court could also go further and address the tarnishment prohibition. “Tarnishment sounds a lot like disparagement,” Ball said. “The court might not explicitly take a swipe at fame or tarnishment, but it could.”
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