In the 80s hit sitcom Cheers, the character Norm, a committed overeater, often talked about his favorite volume-discount restaurant The Hungry Heifer, where they served generous portions of foods like “beff” and “loobster,” which were not to be confused with the products that either of those words almost spell. As the Heifer’s most loyal customer, Norm had no illusions about what he was eating. All good sitcom fun, of course, but also not a bad reference for discussing the infringement of trademarks.
It is not necessary to intend to deceive the market in order to make an infringing use of a trade name; it is only necessary to foster a “likelihood of confusion,” and even that term can be, well, confusing. Take for instance some rough feedback for a UK-based rock-and-roll tribute band called Pearl Jamm that, not surprisingly, received a Cease & Desist letter from counsel representing Pearl Jam. Among other actions, the tribute group has been ordered to destroy any merchandise featuring the name Pearl Jamm and to relinquish email accounts and/or URLs associated with that name.
As reported on Guitar.com, the tribute group feels more than a little insulted by a band they obviously admire, stating, “No one’s ever come to a show, got to the end of the show, came to us and demanded money back because they were expecting to see Pearl Jam play The Garage in Highbury.”
No doubt, that statement is true. But unfortunately for the band, it is also beside the point as a legal matter. Naming anything some variation of Pearl Jam (like preserves maybe?) is at least asking for some legal trouble, but naming a tribute band almost the exact name as the original is prima facie infringement. And it doesn’t matter how many ways the members of Jamm can argue or try to prove that “nobody” confuses them with Jam; that’s not how the legal standard works. Here’s how the USPTO describes the examiner’s job when considering a “likelihood of confusion”:
To find a conflict, it is not required that the marks and the goods/services be exactly the same; instead, it is sufficient if the marks are similar and the goods and or services related such that consumers would mistakenly believe they come from the same source.
But that consideration imagines the entire market, which is obviously much larger than the number of people attending Pearl Jamm shows in the UK. Especially in an age when online commerce is global and counterfeits abound, the potential that at least some consumers—perhaps seniors who missed the grunge years—to obtain merchandise or even CDs believing they’re buying Pearl Jam stuff is hardly even speculative. This is short work for any trademark professional. Again, an intent to confuse does not have to exist in order for a likelihood of confusion to be present in a new trade name.
The reason we’re citing this story is to encourage our clients and readers to please avoid using trade names that look or sound an awful lot like existing names—especially famous ones. While some of these impulses can be very clever and tempting, the most likely assumption will be that you are attempting to ride the coattails of a brand you did not build. And that can be just as bad a PR move as it is an unwise decision legally.
What If You’re in a Different Class Altogether?
We get these requests from time to time—the metaphorical equivalent of the entrepreneur who wants to make a line of fruit preserves and call it Pearl Jam. And we understand the instinct. But even if the class of business you’re in is as different from the original as grunge rock and grape jelly, proceed with caution and the advice of experienced counsel. The general rule to follow is that if you’re trading on the reputation of an existing name, it’s best not to. And where individuals are involved, as they are in a rock band, common law rights of publicity (ROP) may be implicated as well.
Beyond the legal considerations, though, creating your own brand identity is generally better than associating your business with an existing name. Making your own mark—literally and figuratively—can be both rewarding and profitable. Also, you avoid entanglements if one day that other name does something that’s “off brand” for you. In our experience, the stronger your unique brand becomes, the more opportunities you will find to build upon it and grow your business.