Most people are familiar with the rap artist Eminem, real name Marshall Mathers, whether as a fan of his music, his semi-autobiographical film 8 Mile, or the various other reasons for which he has been in the press since the release of his debut album Infinite in 1996.
Eminem is better known by many as Slim Shady, and he has made prominent use of the Slim Shady name. He released the Slim Shady EP in 1997, and achieved mainstream popularity after the release of The Slim Shady LP in 1999. The Slim Shady LP featured the highly successful song ‘My Name Is’, with the song chorus including the lyrics “Hi!, My name is, What?, My name is, Who?, My name is, Chika-chika, Slim Shady”. Eminem’s 2000 album The Marshall Mathers LP also featured the song ‘The Real Slim Shady’, which included the lyrics “May I have your attention, please? May I have your attention, please? Will the real Slim Shady please stand up? I repeat, will the real Slim Shady please stand up? We’re gonna have a problem here?”.
There was indeed a problem. On 12 February 2021, Melissa More and Alan Hoffer filed a US trade mark application for the mark ‘Slim Shady Politics’ in relation to a ‘website for providing news and information relating to national and international politics’. Consequently, Eminem filed an opposition against this trade mark application, claiming that the applied for mark would result in a likelihood of confusion, and would also dilute his Slim Shady trade mark. Since 1997, Eminem, under his real name Marshall Mathers, has filed a number of trade mark applications for the mark Slim Shady; however these applications have been in respect of goods and services such as ‘musical sound recordings’, ‘clothing’ and ‘entertainment services namely, the presentation of live musical performances’. Although the application for ‘Slim Shady Politics’ is in respect of a highly similar mark (and containing Slim Shady in its entirety), it covers services that are different to those covered by Eminem’s earlier registrations.
Even though the respective services differ, Eminem’s opposition argued that there is a likelihood of confusion on the part of the public. Generally speaking, for there to be a likelihood of confusion, the relevant goods and services will be similar, in relation to the same industry, or will somehow be complementary. Even where the marks are identical, peaceful co-existence can be possible where the goods and services are totally unrelated. Take the trade mark POLO for example; it is used by Polo/Ralph Lauren in relation to clothing, by Volkswagen in relations to cars, and by Nestle in relation to mints, with no confusion amongst consumers.
This being said, where a trade mark is particularly famous or strongly associated with a particular business, the scope of protection can extend beyond the goods or services covered by the trade mark registration. In this case, even though Eminem’s registrations do not cover ‘website for providing news and information relating to national and international politics’, it is arguable that when presented with the mark ‘Slim Shady Politics’, people would assume that it is somehow related to Eminem, due to his fame and prominent use of the mark ‘Slim Shady’.
It looks like we are not going to get to see whether The Trademark Trial and Appeal Board (the US Patent and Trademark office’s dispute resolution forum) considers there to be a likelihood of confusion, as it appears that the parties have now come to an agreement. Marshall Mathers submitted an application to suspend the opposition on the basis that the parties were negotiating a settlement in January this year and the application and opposition thereto were finally withdrawn on 13 April 2022.
For further advice on protecting trade marks, please get in touch to speak to one of our trade mark attorneys.