Trademark infringement issues are pitting John Lennon’s widow against an obscure singer named (what else) Lennon – and a top New York tourist attraction against candy giant Mars. Both provide interesting case studies in brand protection.

Lennon vs. Lennon Will Lennon the little-known band really “confuse” the marketplace with Lennon the music icon and “dilute” his surname? According to an article by Josh Greenberg, that’s what Yoko Ono said when she reportedly petitioned the Trademark Trial and Appeal Board of the U.S. Patent & Trademark Office (USPTO) to cancel a trademark taken out by Lennon Murphy in 2003 as the name of her band. Ono has the legal rights to the famous name.

The 25-year-old Tennessee-born singer-songwriter, who was indeed named after John Lennon, was understandably aghast having, she insisted, sought and received Ono's blessing to use the name back in 2000 when she signed with Arista Records. Even after Arista supposedly obtained Ono’s approval in a separate move and released the band’s 5:30 Saturday Morning album, it dropped Murphy and her band mates due to the album’s disappointing sales.

According to Murphy, Ono changed her mind two days before the statute of limitations was due to run out and complained before the Trial and Appeal Board that Lennon the band "fraudulently" registered its trademark. Murphy now claims that this development is jeopardizing her career, even though she believes she's on the right side of the law. She also stated that she never used John Lennon for her benefit, never made a cent out of his name, and cannot understand how people can confuse her with the music icon when no one has accidentally bought her records and given her enough money to hire a lawyer to fight this case.

Faced with a PR backlash, Ono's camp has reportedly softened its stance and now claims that Ono had sued Murphy not to prevent the singer from using her name, but merely to prevent her from having “exclusive” rights to the name Lennon.

Candy Man vs. Naked Man Does New York’s Naked Cowboy have a case against Mars for using a similarly attired M&M candy in Times Square? One of New York's top tourist attractions can be found in the middle of the “crossroads of the world,” strumming his guitar while dressed only in his underpants, boots and Stetson hat. One of candy manufacturer Mars Inc.’s brilliant marketing ideas is an animated blue M&M candy wearing a remarkably similar outfit, frolicking in a video billboard and competing for attention in the very same Times Square.

While the Naked Cowboy (aka Robert Burck) at first found the juxtaposition amusing, he is now reportedly suing the Mars candy corporation – and seeking $6 million for his trouble. His allegations: trademark infringement under the Lanham Act and violation of his right of publicity under New York Civil Rights Law §51, arising from said video billboard for M&Ms.

According to Burck, who filed the suit on the advice of lawyers and trademark experts, "All I've got is my underwear. It's the most brilliant thing that's ever been created from a marketing perspective." He added, "I'm huge now, but I represent the little guy."

Now this might be fodder for late-night jokes, but according to CNN’s American Morning legal analyst, Sunny Hostin, the Naked Cowboy may actually have a case. Hostin said, “In order for him to show trademark infringement, The Naked Cowboy has to be trademarked; has to prove that Mars, without his consent, infringed upon the trademark; and has to show there's a ‘likelihood of confusion’ between his trademark and the allegedly infringing mark -- in this case the naked M&M.

“To state a claim under New York's civil rights law, Burck has to show that Mars used his name, portrait or picture for purposes of trade or advertising, and without his written consent, “Hostin added.

In fact, the Naked Cowboy's name and likeness are registered trademarks owned by Burck. Furthermore, he has licensed The Naked Cowboy name and/or likeness to companies for the purposes of advertising and endorsement. And his character has appeared in several campaigns, music videos, video games, TV commercials, and movies and television programs. Mars, Inc. had no immediate comment.

Lennon vs. Lennon. The Naked Cowboy vs. the  naked M&Ms. Who will prevail?  It will be interesting to see if and how trademark laws can work for the big brands as well as the little guys.

The Federal Trademark Dilution Act (FTDA) of 1995 provides federal protection against trademark dilution. Trademark dilution occurs when a use of a trademark by someone other than its owner impairs the mark's distinctiveness, whether or not the mark is used on a competing product or in a way that is likely to cause customer confusion.

To understand the FTDA, one must distinguish between trademark dilution and trademark infringement. Infringement occurs when someone other than a trademark's owner uses the mark in a way that is likely to cause customer confusion. Dilution occurs when there is a lessening of the association between a trademark and and the product for which it is usually known.

Amendments to the FTDA took effect on October 6, 2006. While the Act still protects only famous marks, it now expressly provides protection against a use of a mark that is "likely" to cause dilution. The new statute thus eliminates the previous requirement of proving "actual dilution." In addition, the amended statute specifically protects against dilution by "blurring" and dilution by "tarnishment." Dilution by "tarnishment" occurs when association arising from the similarity between a mark or trade name and a famous mark harms the reputation of the famous mark.

Wikipedia