Whether you are a fan or not, chances are good that you probably imagine the face of Marshall Mathers (AKA Eminem) when you hear the name “Slim Shady”®, thanks to his popular music success. Even if you have never heard his music, controversy over his incendiary lyrics has risen to the level of national political news.
Given these factors, if you stumbled across a website called “Slim Shady Politics,” would you think you were reading Eminem’s political opinions?
Rapper vs. Website
This is the main question at stake in a trademark opposition filed by Mathers in November. Alan Hoffer and Melissa More owners of an independent news website bearing the name “Slim Shady Politics” filed an application to register the trademark Slim Shady Politics in February 2021.
There is no question who was first in commerce, according to Mathers Notice of Opposition he first used this alias Slim Shady® in 1996. Mathers has registered his trademark Slim Shady® in three classes: Class 41 for Entertainment services, Class 9 for Musical Sound Recordings, and Class 25 for clothing. The website Slim Shady Politics has been operating under the name since 2013. So the real crux of this case rests on the likelihood of consumer confusion.
The du Ponte Factors
We have talked about likelihood of consumer confusion and trademark dilution previously. To understand the “Slim Shady” case better, I think it is worth looking at the du Ponte Factors the United State Patent and Trademark Office (USPTO) uses to determine if there is likelihood of confusion under Section 2(d) of the Lanham Act:
- The similarity or dissimilarity of the entire marks in their appearance, sound, connotation, and commercial impression
- The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a mark is in use
- The similarity or dissimilarity of established, likely-to-continue trade channels
- The conditions of sales, including target buyers – that is, “impulse” careful, sophisticated purchasing
- The fame of the prior mark
- The number and nature of similar marks in use on similar goods or services
- The nature and extent of any actual confusion
- The length of time during – and the conditions under which – there has been concurrent use without evidence of actual confusion
- The variety of goods on which a mark is or is not used
- The market interface between the two marks
- The extent to which a trademark owner has a right to exclude others from using the mark
- The extent of potential confusion – that is, whether de minimis or substantial
- Any other established fact proving the effect of use
In re E.I. du Ponte de Nemours & Co. helped intellectual property courts define the tenets of confusion. There are only so many sensical business names out there, so the TTAB needs to lean on logical differentiation to allow similar trademarks to peacefully coexist.
Using some of the du Ponte factors, does Mathers have an opposition case? What is the likelihood of consumer confusion?
- The strength of the mark – Mathers is well-known as both Eminem and Slim Shady®. His mark is strong.
- The fame of the prior mark – Slim Shady® is very famous
- The similarity of the marks – “Slim Shady®” and “Slim Shady Politics” are quite similar phrases in sight and sound.
- The similarity of goods – Mathers is not particularly reputed for his news presence on the internet. His reputation and influence rests firmly in music and entertainment.
- The degree of care by the consumer – Consumers have likely formed an opinion on Mathers as Eminem/Slim Shady®. Some are fans, others not. Overall, though, he is a public figure, and the public reacts to his evolving reputation.
This last factor illustrates the greatest strength of the opposition. And it brings us back to the question at the beginning of this post.
If you believed that you were reading strong political opinions written by Eminem, would that change your perception of him, and thus his trademark? If you were a fan, it might reduce your goodwill toward him. The similarity of the names does seem to make that confusion a real matter of concern.
Will Slim Shady® Politics Oppose the Opposition?
After a trademark opposition is filed, the original applicant has a month to respond. If they do not, the TTAB will deny their trademark application.
Mathers took action. We have yet to see how the website with his moniker will respond. His lyrics addressing “the real Slim Shady” seem oddly prescient now.