Info/Law

Colette Routel, a friend who teaches Native American Law at Wayne State, pointed me to a trademark tussle over Hors La Monde’s move to name a new perfume “Shiloh.” Angelina Jolie, parent of Shiloh (along with Brad Pitt), filed an opposition to HLM’s attempt to register the mark. (See Application S/N 78911573 at the USPTO’s Web site.) Hors La Monde won the ensuing battle when Brangelina dropped their opposition – apparently because HLM began work on Shiloh before, well, Jolie and Pitt began work on Shiloh. (However, baby Shiloh was born on May 27, 2006; HLM didn’t file the registration until June 19, 2006.)

In my Trademarks class, we just finished opposition to applications to register a mark. Standing to oppose a mark is generous: Section 13 of the Lanham Act lets anyone “who believes that he would be damaged by the registration of a mark” to file an opposition. What constitutes “damage”? Well, it has been interpreted generously; the Federal Circuit let William Ritchie oppose O.J. Simpson’s attempt to register his name, “O.J.”, and “The Juice” as marks due to Ritchie’s sincere belief that the “sanctity of marriage requires a husband and wife who love and nurture one another,” and his concern that OJ’s marks would justify spousal abuse. In theory, an opposer has to show a real interest in the mark and a reasonable basis for damage; if it worked for Mr. Ritchie, it would seem to work for Brangelina and little Shiloh.

As a policy matter, this broad standing for opposition – letting almost anyone with a plausible interest in a mark contest its registration – worries me for two reasons. First, it seems to treat similarly-situated entities with different standards. A search for live marks with “Shiloh” in the PTO’s Trademark database turned up 25 results, including ones for whirlpool baths (S/N 78610642), wine (”Shiloh Road,” S/N 78747706), cigarettes (S/N 78680643), and even firearms (”Shiloh Rifle”, S/N 77209490, filed June 19 of this year). They would seem to benefit equally from the baby’s fame; should all “Shiloh” marks have to stand or fall together? If not, might that lead Ms. Jolie (or her attorney) to shake down potential and actual “Shiloh” mark holders for a fee to avoid suit? (Consider how a small company might react compared with a large conglomerate, and the equity issues involved.)

Second, trademarks are a government-granted monopoly; they can last forever, and we’re willing to deploy courts, as well as the Customs Service, to protect them. They’re intended as informational shorthands that help consumers find goods and services, and that encourage producers to invest in quality. Neither of those goals is advanced by allowing famous couples to challenge marks that coincide with their child’s name. In short, having standing for opposition this broad isn’t helpful to the larger societal purposes trademark law purportedly advances.

Until then, though, maybe Gwyneth Paltrow and Chris Martin should phone up Steve Jobs on behalf of little Apple…

Filed under: Media, Trademarks