Stobbs comments on well known brands: JAWS bites back!
On 18 March, the Trademark Trial and Appeal Board (TTAB) of the US Patent & Trademark Office (USPTO) upheld an examiner’s decision to refuse two US trademark applications for the word marks “JAWS” and “JAWS DEVOUR YOUR HUNGER”.
The applicant, “Mr Recipe”, had planned to use the marks in connection with an internet cooking channel. However, both the USPTO examiner, and the TTAB, agreed that the 1975 Steven Spielberg film ‘Jaws’ was so well-known that the use of the marks, even for an unrelated commercial field, would be confusing and may lead consumers to believe that the two parties are connected.
This case serves as a useful reminder to those adopting new brand names that famous marks can enjoy a broad scope of protection and exclusivity of use, both here and overseas, far beyond the remit of their original commercial field. This means that, whilst clearance searches should start with identical/similar marks for identical/similar goods and services to knock-out obvious bars to use and registration, searches may need to go much broader if the mark concerned is well known.
It is also worth bearing in mind that, in the UK, even if the original trademark registrations have lapsed, the absence of a common field of commercial activity between the parties does not necessarily mean that a claimant cannot succeed in bringing an action for passing-off based upon their common law rights.
If you would like advice on the adoption of a new brand name, please do not hesitate to contact Stobbs for advice.
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