What is a Miley Cyrus? – Ep. 36 [Podcast]

Summary:

In this episode of Stuff You Should Know About IP, Thomas Colson and Raymond Guarnieri welcome special guest Rob McLaughlin to discuss a trademark case from the European Union that involves Miley Cyrus. Tom Colson loves Miley Cyrus. Miley Cyrus and her company, Smiley Miley, Inc., sought to register the trademark her name (“Miley Cyrus”), but another company that already had a trademark on “Cyrus” opposed Miley’s registration. There was some overlap in the products offered by the respective entities. Typically, trademark law concerns the question of whether consumers will be confused as to who makes or sells a particular product. In the EU, even when two trademarks look and sound very similar, if there is conceptual difference between them – i.e., if the two marks mean completely different things – then consumers will not be confused between the two marks, and the conceptual difference can override the other similarities between the marks. A trademark owner is usually able to prevent others from using the same trademark or a similar trademark on the exact same goods or similar goods in the country that granted the mark, however it is possible to register a trademark throughout the entire EU. A trademark registration can be opposed at the European Union Intellectual Property Office, or the EUPIO. Legal proceedings involving trademark issues can be time-consuming and expensive, especially if there are appeals. In this case, Miley Cyrus filed her registration in 2014, and the entire process took around seven years. Because Miley Cyrus is a famous individual, there is conceptual difference between her name, “Miley Cyrus,” and “Cyrus.” Unlike some celebrities who are sometimes known only by their last names, Miley Cyrus is not known simply as “Cyrus.” Initially, the Opposition Division at the EUIPO rejected Miley Cyrus’s application. Miley then appealed that decision to the Board of Appeal, but the Board upheld the Opposition Division’s decision. Miley Cyrus then appealed that decision with the General Court, and the General Court ruled in favor of Miley because she is famous and there is therefore conceptual difference between “Miley Cyrus” and “Cyrus” in the minds of consumers.

Transcript: 

Raymond Guarnieri:

What is a Miley? What is a Cyrus? And what is a Miley Cyrus? The EU General Court rules that if you’re famous, you can come in second and still win. We’re here today with Rob McLaughlin at the European firm Reddie and Grose to talk about this exciting trademark case. This is Stuff You Should Know About IP. Today’s episode of Stuff You Should Know About IP is brought to you by the Trademark Lawyer Magazine. If you want to stay up to date with everything that’s going on in the world of IP and trademarks, go to www.trademarklawyermagazine.com. Each issue is free to read for up to eight weeks. That’s trademarklawyermagazine.com for global news in the world of trademarks. Okay. So Tom, Rob. Let’s talk about Tom’s favorite musician, Miley Cyrus.

Thomas Colson:

Yeah, it is. It absolutely is. The reason I love this episode is because I love Miley Cyrus. More importantly, I love Hannah Montana. Because when my daughters were growing up in their primary like three to 10 age, Hannah Montana was what we watched constantly. And then she became Miley Cyrus of course, because she’s Billy Ray’s daughter. I don’t just like Miley Cyrus and I love her music, but I like Billy Ray because when I was younger, he was a really popular guy. So I like it all. And when I saw this, I thought, what a great opportunity and Rob, you’re going to give us the detail, but kind of at a quick high level, we have Miley Cyrus and her company Smiley Miley, Inc. trying to get trademark protection on Miley Cyrus. And I think it was in like 2014. And when they went to do it, there was a company out there that already had a trademark on Cyrus. And there was a little bit of overlapping products I think. And they opposed. Enter Rob McLaughlin.

Rob McLaughlin:

Yeah. So that’s a really good summary Tom. Thanks for that. So like this case is actually is one of a few big ones in EU trademark law that deal with this idea of conceptual difference. And the idea is that even when you’ve got two marks that look really similar and sound really similar, if they mean completely different things, then consumers are not going to get confused between them. And say, in some situations, this conception of difference can be so powerful that it overrides all of the other similarities between the marks. And there’s been a few of them. In these big cases, they’ve actually all oddly enough, been about famous people, trying to register their names as trademarks. In fact, there’s one of them where the famous person already had the trademark registration of their name and they were trying to stop someone else come in and get a registration for something similar.

Rob McLaughlin:

So in this situation or in either of those two situations, what you’ve got is you’re comparing two trademarks and you’re trying to work out if consumers would be confused between them. But one of the trademarks is the name of a celebrity, the name of a famous person. And the idea behind this case is that consumers know that person’s name, they know what that trademark refers to. So even if the other trademark’s really close, they’re still not going to be confused between them. And essentially it’s the main reason why I find this Miley Cyrus case so interesting because it’s a really good example of this principle.

Thomas Colson:

So basically Rob, before you go on, I think what I’m hearing is normally, or maybe always, the question in this scenario is will the consumers be confused as to the source or origin of the products or services that are represented by the trademark? So if I’m buying a product, the world of trademark law doesn’t want me to be confused as to who it is that makes or sells that product, right?

Rob McLaughlin:

Exactly. Exactly.

Thomas Colson:

So then when we have a trademark like Cyrus and that’s already out there, and then we have Miley Cyrus trying to get a trademark on her name for similar goods, people might be confused if you’re just looking at the phonetics and the visual, right?

Rob McLaughlin:

That’s the legal background. That’s where Cyrus coming from. Definitely. Shall we catch all the listeners up to speed? Should we give them all the basic facts of the case?

Thomas Colson:

Yes, let’s do that.

Rob McLaughlin:

And maybe explain to them the terminology that we’re going to use. Just catch everyone up to speed. So we’re talking, as we’re very clear, we’re talking about trademark work. So what’s a trademark? As you were saying, it’s a sign that you use to identify your goods and your services. And Miley Cyrus uses her own name as a trademark to identify her services. So I don’t know, her music and her acting and some goods, like maybe some merchandise and stuff like that. And this is what she tried to register. She tried to register the name, the two words, Miley Cyrus. And so I guess the next question is, what’s a trademark registration? So as you were saying, this is an IP right that allows you to prevent someone else from using the same or a similar trademark, if this would cause consumer confusion, or if this would harm your own trademark.

Rob McLaughlin:

And in this scenario, in the Miley Cyrus scenario, the trademark that she’s trying to register is her name. And that’s kind of unusual. Like a name is quite a niche category of trademark. Most trademarks are made up words. Like I don’t know, like Google, or maybe they have a meaning, but it’s not quite connected like Amazon or Apple or Yankees or Coca-Cola. And having a trademark that is your name is quite a niche thing to do. And normally it’s famous people who are trying to register their names as trademarks. And the logic here is that they’re trying to get some legal control over who can use their name in a commercial context, who can use their name for financial gain. Say Miley had a registration for covered clothing, like women’s apparel and things like that. Then this would give her legal rights to stop other people using her name on unofficial merchandise.

Thomas Colson:

So she has a trademark, Miley, let’s say she had a trademark for Miley Cyrus for clothing. Somebody else comes out with Miley Cyrus for clothing because hey, Miley is already famous, she spent a fortune on building a reputation. If I sell Miley Cyrus clothing, I could make money without having to do much in the marketplace.

Rob McLaughlin:

Exactly.

Thomas Colson:

That’s not cool.

Rob McLaughlin:

So that’s what a trademark registration does. It allows the owner to prevent other people from using the exact same mark or a similar mark for the exact same goods or similar goods. That’s its function. And these registrations, they’re territorial rights, they only apply in the country where they’re granted. So the US government grants US trademark registrations, the UK government grants UK ones, and so on. But here in the EU, you can get a trademark registration, which covers the entire EU, so that’s all 27 countries. And this is what Miley tried to do. She files an application for an EU trademark, but part of the process of getting the trademark is this three-month window where other people can come along and oppose your application.

Rob McLaughlin:

You see, because a trademark registration doesn’t just give you the right to prevent someone else from using the same or similar mark, which that’s when you see them for infringement, like in the example we were just discussing, but a trademark registration also allows you to stop someone else coming along later and then getting their own trademark registration for a mark, which is the same or similar to your one.

Rob McLaughlin:

And you can stop them doing this by opposing their application. And in this case, it was a company called Cyrus Trademarks Limited, who came along and opposed the Miley Cyrus application. And then this company that connected with this British brand of audio equipment called Cyrus Audio. They make like speakers and high-fis and things like that. And so they have this registration, I don’t know if any of us have it open in a document that we can pull it up, put it on a screen maybe?

Thomas Colson:

We’ll put it on. Ray can put it on after the fact.

Raymond Guarnieri:

We can show the marks. Yeah, we’ll show the marks.

Thomas Colson:

So assume it’s on the screen right now, Rob.

Rob McLaughlin:

Will do, but I’ll describe it for people who are just listening to the podcast. It’s the word Cyrus written in capital letters and you guys have seen the mark, it very obviously says the word Cyrus. It’s not really like heavily stylized. It’s not really figurative. It’s just got a few stripes down the middle basically. And this registration, it covers various types of audio equipment, like loudspeakers and high-fis, and it’s this registration that they use to oppose the Miley Cyrus application.

Thomas Colson:

Did you know of this company before this case?

Rob McLaughlin:

No, to be honest, I hadn’t heard of them, no. But before we get into talking about the opposition, there was one thing which I feel like I should explain. I want to take a minute just to mention about the court, the issue, the decision that we’re about to talk about just in case some listeners aren’t familiar with the structure of the EU courts. And to be honest, this adds quite a lot of significance to the decision because when a decision comes from a court which is higher up in the court system, it’s much more persuasive in a world of future cases. And so the way that it works with EU oppositions is when you oppose an EU application, these legal proceedings, they’re run by the institution that grants the trademark registrations, which is called the European Union Intellectual Property Office.

Rob McLaughlin:

And everyone just abbreviates this the EUIPO. And so it’s the Opposition Division of the EUIPO, these are the guys who make a decision in the first instance, and they have thousands of oppositions come in each year. And if you’re the opponent or if you’re the applicant and the Opposition Division have taken a decision in your opposition, and you feel like they’ve made a mistake, then you can appeal it. You can appeal it to a higher level, which is called the EUIPO Boards of Appeal. And in my opinion, this is where it gets more interesting because you’re not just arguing about the merits of the case. You’re arguing about why the lower court decided it wrong in the first place. And then I’d say the vast majority of cases don’t go up to the Board of Appeal.

Rob McLaughlin:

They stay at the first level, you get a decision and then that’s that. But then a lot fewer than those do go up to the Board of Appeal. But it doesn’t stop there. If you feel that the Board of Appeal have made some mistakes when they were deciding the case, then you can appeal it even higher. And this is where it leaves the EUIPO entirely and it goes to the Courts of Justice, which is, how do I describe it? It’s like the central and overriding court system in the EU. Like each country in the EU has its own courts, but when it comes to matters of European Union law, the Courts of Justice is the highest court.

Thomas Colson:

So all the EU nations are bound by decisions of the Courts of Justice?

Rob McLaughlin:

If it’s on a matter of harmonized European law. So trademark law is harmonized from the European Union. So you’re right.

Thomas Colson:

But it wouldn’t get there though, if it wasn’t a matter of harmonized European law?

Rob McLaughlin:

Precisely. [crosstalk 00:12:19]

Thomas Colson:

Right. So if it goes there, that decision binds everybody in the EU, all the EU countries.

Rob McLaughlin:

Yeah, theoretically.

Thomas Colson:

It’s precedent, if you will.

Rob McLaughlin:

Exactly. Exactly. Is this the same way the Supreme Court works in the States, maybe?

Thomas Colson:

Exactly. Yep.

Rob McLaughlin:

So the Courts of Justice, this is where the Miley case came from. So the Courts of Justice is split into two. First of all, you get the general court and these are the guys who issued the decision to we’re about to talk about. And they come out with a few really important trademark cases each year. And then one step above them is the final court of appeal to the Courts of Justice at the European Union. And when either of these two guys make a decision in a trademark case, it can be incredibly important. Like the idea is that, like you were saying, they provide clarity on European law. So whatever they decide can quickly change the whole landscape of trademark law throughout the EU.

Thomas Colson:

You know what else is stunning though, is at a practical level, how much money you have to spend, because you’ve just mentioned several layers. You start at the EUIPO, then you go to the EU Boards of Appeal.

Rob McLaughlin:

Exactly.

Thomas Colson:

So that’s expensive, that costs money because you said hardly any even leave the EUIPO. They don’t go up to the Boards of Appeal. Then go to the General Court. Then you go above that. So if you have to get that high, you have spent a lot of money.

Rob McLaughlin:

And you’ve spent a lot of time. Because like you were saying in the beginning, this opposition, the one we were describing Cyrus versus Miley Cyrus, this was filed in 2014. So that was seven years ago. That’s how long these guys have been in this legal battle fighting each other over this trademark. And that’s the reason why I wanted to describe the court structure to give an impression of how long it’s lasted and how important it must be.

Thomas Colson:

Yeah. That’s really useful, Rob. I’m glad you went through that before we now dig into the actual matter at hand.

Rob McLaughlin:

Yeah, exactly. So back to the actual case. The ground position that Cyrus relied on, which means like the legal argument for opposing Miley’s registration, is that consumers would be confused between the two marks and in the EU, I don’t know about the US, but in the EU, this analysis is a three-step process. So the first question you ask yourself is, are the marks similar? And the second question is, are the goods and services similar? And then the third question is, looking at all of the specific factors of the case are consumers likely to be confused?

Thomas Colson:

It’s similar to the US. There’s other little things like, is it likely that the two would connect over time? If they’re different, but are they similar enough that they might connect, but basically it’s the same exact mentality that you just laid out in the US.

Rob McLaughlin:

Yeah, exactly. And in this case, the goods and services were similar. The Miley Cyrus application and the early registration, they kind of covered the same sort of stuff. So there wasn’t much interesting argument around this. It’s the first step in the process, the comparing the two marks that we’re going to talk about. And so the methodology that we use when we’re comparing two trademarks in the EU is to measure three specific factors, three specific types of similarity between the marks and these are visual, so whether the marks looks similar, phonetics, or whether they sound similar, and then conceptual, which is whether the marks have a similar meaning. And then after you’ve looked at all three of these factors and based on the outcome, you decide the overall degree of similarity between the marks.

Rob McLaughlin:

And lots of other factors come into play here. Like in different scenarios, different types of similarity can be more important, like when you’re working out the overall degree. So for example, if I was to go to the pub later on this evening and go to the bar and order a beer, then it’s the way that the mark sounds that’s going to be important because I’m ordering the product out loud. I’m telling the bartender which one I want. And then I guess on the other hand, if I was doing some online shopping on Amazon, then I’m not really going to be saying the product. I’m not going to be saying the trademark out loud to anyone. So it’s the way that it looks to me that’s important. And so that’s visual, that’s phonetic. And in general, if you’ve got two marks which are visually and phonetically similar, like Cyrus and Miley Cyrus, like they overlap in the word Cyrus that’s visual similarity, right there. That’s phonetic similarity.

Rob McLaughlin:

If you’ve got those two in the bag, then normally the two marks going to be similar overall. But the conceptual comparison, that can be really important. And the conceptual comparison is the really interesting part of this decision. And this is where it becomes relevant that the mark in question, Miley Cyrus, is the name of a famous person. Because the key thing here is that even when the marks are visually and phonetically really similar, if the conceptual difference is big enough, then this can outweigh the visual and phonetic similarities and the marks will be dissimilar overall. And when it comes to celebrities, applying to register their names as trademarks, you’re in a situation where consumers, they know what that trademark means. It’s the celebrity’s name. And as you’d expect this has a massive impact on the conceptual comparison.

Thomas Colson:

So because Miley Cyrus is so famous.

Rob McLaughlin:

Exactly.

Thomas Colson:

When people see Miley Cyrus, they think of something very different than Cyrus. And I think the court even mentioned in this case that Miley Cyrus never goes by Cyrus. I’ve known of this person for a dozen years and no one has ever said, “Cyrus.” They always say, “Miley Cyrus.” Sometimes they say, “Miley and Miley Cyrus,” but never “Cyrus.” And that was another point, right?

Rob McLaughlin:

That came into play when general court who made this decision, when they’d already decided in favor of Miley, the other guys were arguing that Cyrus has the same conceptual meaning as Miley Cyrus, because it’s her last name. They were trying to draw analogies to famous people who go by their full name and I’m trying to think of some good examples, like Biden, Joe Biden. Means the same guy. If I said Biden or if I say Washington or George Washington, they go by their last name. Or like Rinaldo, like famous soccer players, people like that. So they were trying to say Cyrus has the same meaning, but the general court had none of it. Because like you said, there was absolutely no evidence that throughout any part of her career she ever referred to herself as just Cyrus. She’s always Miley Cyrus.

Thomas Colson:

Right, yeah. That seemed to have an impact. So when people see Miley Cyrus, they know that it’s not or they don’t think of Cyrus.

Rob McLaughlin:

Yeah, exactly. They think of Miley Cyrus, don’t they?

Thomas Colson:

Yeah, and was that really the big thing that saved Smiling Miley, Incorporated was that that Miley Cyrus as a name is very famous and it puts something into people’s brains that is very different than just Cyrus, right?

Rob McLaughlin:

Yeah, exactly. Exactly. So there’s a difference between them.

Thomas Colson:

It’s funny because when I think of it, so in the US we have this thing called the Lanham Act and the Lanham Act has two basic causes of action in trademark matters. One is infringement based upon likelihood of confusion. And one is based upon something called dilution. And in order to have a cause of action for dilution, you must have a famous mark. So if I set up a kayak business and I call it Nike and I have the swoosh, it doesn’t matter that people wouldn’t think Nike was going to get into the kayak is just because it’s so famous that I’m actually diluting their mark by using it on my kayak business with the swoosh. That’s what I was thinking of even though it’s not the same thing with you, it’s a similar concept, right?

Rob McLaughlin:

And very relevant, very relevant. We’ll get onto this. Because there was some confusion between those two concepts at the Court of Appeal level.

Thomas Colson:

Brilliant. So I’m the perfect show for you. I set you up.

Rob McLaughlin:

Yeah, exactly. We have similar trademark laws in the UK and the EU, which protects famous marks from being diluted and being damaged and being tarnished. But they go a bit further than that and they allow you to stop someone taking unfair advantage of the mark. So the expression we use is riding on your coattails. So that guy selling Nike kayaks, everyone would go along and be like, “Well, I know you’re not Nike, but I like Nike. So I’m going to try your kayaks.” That gives Nike grounds to stop them doing that. That’s the unfair advantage [inaudible 00:21:22]. Basically, yeah, it’s very similar stuff to what you guys have in the US.

Thomas Colson:

But what’s interesting here is, normally these Lanham Act cases on antidilution are a famous mark that’s first, somebody else tries to get in and ride on their coattails and diminishes their brand. This is the reverse.

Rob McLaughlin:

Exactly.

Thomas Colson:

Cyrus came first. So it’s like Smiley Miley, Inc. With the Miley Cyrus mark comes second and they’re using the fact that they’re famous to not block Cyrus because Cyrus came first but to get in at all, right?

Rob McLaughlin:

Exactly, yeah. And that the fact that it’s backwards to how it normally works caused some confusion at the Board of Appeal. And so we can get into that. But I think before we explain what happened in the Board of Appeal, we have to kind of start with what happens at the first level.

Thomas Colson:

Okay let’s do that.

Rob McLaughlin:

Very quickly. Comparing the two marks, Miley Cyrus and Cyrus. They were visually and phonetically similar because what the EUIPO thought was when consumers, when it came to how they would see the marks and how they would pronounced the marks, they were close, they were similar. So the next step is to look at what the marks mean and before we get into the intricate meanings that were ascribed to it, all of the fame of her and everything, what they said originally was that it had no meaning. Like you said in your intro, there is no such thing as a Miley, a Cyrus, or even Miley Cyrus.

Thomas Colson:

I like that.

Rob McLaughlin:

I don’t get it. They work in a very algorithmic way. This first level, the Opposition Division, the first level where you file the opposition, the first part of the conceptual comparison for them is to pick up a dictionary and see if the mark has a meaning or in fact, I guess they pick up a whole load of dictionaries because they got to check for meanings in every language in the EU. If a trademark is like an expression, like it’s made up of more than one word, then they add them all together and see if it has an overall meaning. I don’t know, like coffee and mug, and then you get coffee mug. They’ll squish it all together and then they’ll see if there’s a meaning and if they don’t find one, like when they said there’s no such thing as a Miley, a Cyrus, or even a Miley Cyrus, when they don’t find a conceptual meaning, they can’t do the conceptual comparison. So they say that the outcome of the comparison is neutral. Which means-

Thomas Colson:

But they said this at the EUIPO?

Rob McLaughlin:

Yeah at the very first one.

Thomas Colson:

And then they sincerely hope that the arbitrator or the judge at the EUIPO had no kids who were 12 years old and watched Miley Cyrus, right?

Rob McLaughlin:

Yeah, that’s what I mean. To me, this is just my opinion, but it seems a bit blind to the facts because surely they know who she is. She’s not just famous, she’s world famous. When they got the case in front of them and all of the evidence and the papers and the arguments, they must have looked at the very top where it says Miley Cyrus and been a bit [crosstalk 00:24:26] and like, “Oh, she’s famous guys. She’s a celebrity.”

Thomas Colson:

Right. I don’t care what your technical analysis says, I watch her all the time. She’s famous.

Rob McLaughlin:

Exactly. Exactly. So they decided that the conceptual comparison was neutral, which means that it’s not a point in favor of there being similarity, it’s not a point in favor of there not being similarities. It’s just neutral.

Thomas Colson:

So they essentially take it off the table?

Rob McLaughlin:

Yeah. [crosstalk 00:24:53]

Thomas Colson:

And then they go back to just phonetic and visual?

Rob McLaughlin:

And then the marks are similar, the goods were similar, and then the opposition won and her trademark application was rejected. And so Smiley Miley Inc. weren’t having that and they appealed this to the Board of Appeal, which is step two.

Thomas Colson:

Cha-ching, cha-ching. More money.

Rob McLaughlin:

Hang on a second. Like the Miley Cyrus name is famous. When it’s used as a trademark consumers know what it means because it is Miley Cyrus’s name and consumers know who she is. So this meaning is completely different to the Cyrus trademark and this conceptual difference is big enough to overpower the other similarities. And they were basically making this argument to get the point across that consumers will not be confused and the opposition should not have won. But as we were just discussing it, how I said the Board of Appeal, the way that the general court explained to the Board of Appeals division, they said that the Board of Appeal didn’t really fully grasp where Miley Cyrus was going with this argument, because they just said, “You’re the applicant here. How famous your mark is doesn’t matter.” Because just like you were saying in the US-

Thomas Colson:

Yes, yes.

Rob McLaughlin:

You get this additional protection if you have a reputation. If your trademark is famous then you can prevent other people from using or registering marks which are going to dilute your brand.

Thomas Colson:

But you don’t have a trademark.

Rob McLaughlin:

Yeah. And so the Board of Appeal thought that Miley was making this argument. And they just saying… Sorry, I’m a bit lost. I can’t really…

Thomas Colson:

No, no, no. It’s the reverse argument. That’s what confused them a bit is that normally it’s a trademark that’s already out there that’s famous that’s being infringed upon by someone else. In this case, the famous one isn’t out there yet.

Rob McLaughlin:

Exactly. And it must be confusing because I just tripped myself up thinking about it.

Thomas Colson:

Exactly. That’s right. I’m confused.

Rob McLaughlin:

What confused them was that Miley was on the attack and they were saying, “No, no, no, you’re defending. Your reputation doesn’t matter. We don’t take that. The fact that your name is famous.” And they admitted that. They said-

Thomas Colson:

Yeah, because they’re confusing, damaging your reputation versus confusing similarity.

Rob McLaughlin:

Yeah. Yeah, exactly, exactly. And they said, “You’re the applicant. The fact that your name is famous and the mark is your name doesn’t matter. We’re not interested in how famous your mark is.” So the entire argument was kicked out. And so the Board of Approval upheld the opposition. They said the opposition stands and that your mark is still rejected. Your application still refused, but this is really important. What they said was we know you’re famous Miley, but that doesn’t matter. And so then when Smiley Miley appealed this up to the general court, and then the general court is reaching their own decision on the conceptual similarity, they saw that the Board of Appeal had admitted that Miley Cyrus was famous. And so according to the general court, the Board of Appeal should have concluded based on the fact that she’s famous, that the public were likely to make a conceptual association between the trademark Miley Cyrus and the famous singer Miley Cyrus, which means that the Miley Cyrus trademark has a conceptual meaning.

Rob McLaughlin:

So it’s not neutral the way that they had maintained up until this point. And then the general court went even one step further and they said, “Not only Miley Cyrus the trademark have a conceptual meaning, but this is exactly the kind of circumstance when this conceptual meaning is so different to the other mark, that it outweighs all of the similarities between them.” And so even though the marks are visually and phonetically similar, they have such different meanings that the marks aren’t similar overall. And when the marks aren’t similar, the consumer confusion ground of opposition, that fails, that falls away. And so the earlier decisions, the Board of Appeal and the opposition division, they were overturned. And it looks like Miley’s finally going to get registration of her trademark. Seven years [crosstalk 00:29:12]

Thomas Colson:

Yeah, it’s interesting because it really comes down to, will the marketplace be confused, right?

Rob McLaughlin:

Yeah.

Thomas Colson:

If that company Cyrus had originally secured trademark protection on Miley Cyrus because let’s say that before Miley Cyrus became famous, let’s say they had it 30 years ago, then Miley Cyrus comes in and tries to get or Smiley Miley Inc. comes in then tries to get Miley Cyrus, very different outcome I’ll bet. Because again, they don’t use the name Cyrus alone. They always use Miley Cyrus, which puts something in my mind. But if it was Miley Cyrus, the same trademark, it would have blocked Miley Cyrus probably because now-

Rob McLaughlin:

It would have been closer. It would have been a lot closer. I think it wouldn’t be so easily-

Thomas Colson:

Well how could you have a conceptual difference if they’re exactly the same mark?

Rob McLaughlin:

I don’t know. Imagine two generations from now you have the biggest superstar in the world is called Coca-Cola. That’s his name. He’s a rapper or something. And imagine Coca-Cola is trying to get a registration of his name, but Coca-Cola is saying, “Hang on a second. You can’t have that.” I imagine, I’m just speculating here, but maybe the courts would say that consumers would look at Coca-Cola the rapper and think, “Oh, that’s clearly Coca-Cola the rapper,” so that they should be able to have a registration for some goods, I guess.

Thomas Colson:

I think you’d have to have a logo. You’d have to have something more than Coca-Cola. If Coca-Cola the rapper had like this rainbow or something because Coca-Cola believed in the rainbow movement, whatever that is. But it seems like if it’s exactly the same mark, you wouldn’t know which it was, is it Coca-Cola the rapper or Coca-Cola the soft drink?

Rob McLaughlin:

I don’t know, man. Bad example, maybe.

Raymond Guarnieri:

Doesn’t the similarity of the goods or services come into play at some point?

Rob McLaughlin:

Oh, definitely yeah.

Thomas Colson:

Yeah because you’re going to go back to that. In this case with Miley, they were overlapping, but with Coca-Cola, maybe Coca-Cola is going to have the sneakers. Although in the US, Coca-Cola’s a famous mark. So you’re screwed anyway.

Rob McLaughlin:

Exactly.

Thomas Colson:

But I read an interesting comment on this and I’ll just read it word for word, the threshold at which conceptual differences may be found to counteract phonetic and visual similarities is still unclear. The threshold, like where is that line? Everyone has heard of Miley Cyrus, but what about lesser known celebrities? I’m sure that there’s a big fight when you come up with someone who’s not quite so well known as Miley Cyrus, not an international pop star, but I’ll give you an example.

Thomas Colson:

My ex-wife has a boyfriend. And this guy is like pure Buffalonian. That’s the town we’re from. Everything Buffalo. Buffalo is the center of the universe. They go to Chicago and they go to a football game in Chicago. And my brother’s at the game and he’s overhearing my ex-wife’s boyfriend, Steve, arguing with some 25 year old, “How could you not know who Jim Kelly is? Everyone knows who Jim Kelly is. Jim Kelly is the most famous quarterback of all time.”

Thomas Colson:

And this 25 year old’s like, “Who the hell is Jim Kelly?” So Jim Kelly, who you might not know, Rob, I hope you don’t know him. Jim Kelly is the most famous Buffalo quarterback of all time, but no one outside of my generation in America would know who that is. So that would be a good example where if Jim Kelly tried to get a Jim Kelly trademark or blocked someone, they might say, “You’re not famous enough. It doesn’t create that conceptual connection for enough people that we’re going to let you block someone else, or we’re going to let you overcome an opposition because you’re Jim Kelly and you’re not Miley Cyrus.” There’s a threshold and we don’t know what that is.

Rob McLaughlin:

Well I guess that answers the question because if you’ve got, what’s his name, Jim Kelly, right?

Thomas Colson:

Yeah.

Rob McLaughlin:

If you’ve got the Jim Kelly’s of this world, maybe they were huge celebrities in their day, but then their star has dulled. They’re not as famous these days with the younger generation or maybe you’ve got celebrities who think they’re famous, but aren’t nearly as famous as they think. But you’ve got these guys involving themselves in trademark disputes and if they do get into these trademark disputes and they do try and run this argument, they’re like, “I’m like Miley Cyrus. I’m so famous that I should get my registration.”

Thomas Colson:

Yeah, I’m Rob McLaughlin. I’m a famous trademark lawyer. I’m internationally known, especially after this podcast, Rob. But are you big enough that you could black someone from opposing your Rob McLaughlin trademark or block someone from infringing it? That’s the question.

Rob McLaughlin:

My point was, the more people try, the more decisions we’re going to get, the more data we are going to have on this threshold issue. And then we’ll be able to say, “Oh, you’re not quite a Miley, but you’re not quite at Jim Kelly. So you’re in the middle.” I think what’s really important actually is this question of proving how famous you are with evidence. And I mentioned this to you before the call, but evidence was barely involved for some very weird reasons, quite technical reasons actually. But essentially that’s one of the most intriguing parts that decision I think is, you know how much evidence is required to prove that your trademark is famous in the US right?

Thomas Colson:

Absolutely.

Rob McLaughlin:

Well, it’s the same in the EU. You need to convince the courts that your mark has a reputation in a substantial part of the EU. And this involves showing the court how many sales you make, how much revenue you have, how big your advertising budget is, how the media loves your brand, how you have this huge following, and so on. But in this case, in the Miley Cyrus case, there was only a tiny bit of evidence which was filed at the very first stages of the proceedings. And it was some website screenshots and some social media screenshots. And this is [crosstalk 00:35:22]

Thomas Colson:

But Miley’s rich. Miley has enough money to hire any lawyers. Why wouldn’t the lawyers-

Rob McLaughlin:

And supply all the evidence. Exactly.

Thomas Colson:

Yeah, why wouldn’t they have done that?

Rob McLaughlin:

Because I guess-

Thomas Colson:

It’s Miley. She’s so famous. You don’t need to do it.

Rob McLaughlin:

Exactly. That’s eventually what happened. I don’t know, I can’t guess why they didn’t file evidence.

Thomas Colson:

Maybe they just thought we don’t need it. We’re the Beatles of America. We’re Miley Cyrus.

Rob McLaughlin:

Well, for whatever reason, the only evidence they filed was tiny. It was nowhere near the amount of evidence that would normally be required to prove that a trademark is famous and that a trademark has a reputation and that this trademark entitles you to a wider scope of protection like we’re saying. And I think the reason why they got away with filing hardly any evidence is because that wasn’t the issue. Like we were saying, they’re not trying to say that their trademark has a reputation. They’re trying to say that it has a conceptual meaning and that this would be understood by the public. So the issue is not my trademark’s famous. It’s that Miley Cyrus is famous.

Thomas Colson:

And it helped that the Boards of Appeal acknowledged that yes, everyone knows Miley Cyrus. We get it, Miley. You’re great. We get it.

Rob McLaughlin:

Yeah, they said, “You might be famous.” They said, “You might be famous, but that doesn’t matter to us.”

Thomas Colson:

We don’t care. In fact, the fact that you’re famous, we don’t like you at all, Miley.

Raymond Guarnieri:

Sounds like they were a little jealous maybe.

Thomas Colson:

Yeah, there you go. Yeah. It’s like, oh, we get it. You’re not as famous as our Queen, that’s for sure.. You’re not as famous as the royal family, Miley.

Rob McLaughlin:

Well, they have their own trademark problems sometimes.

Thomas Colson:

Oh yeah?

Rob McLaughlin:

That’s another story. That’s another story.

Thomas Colson:

Yeah, that’s for a different podcast.

Raymond Guarnieri:

That’s for the next podcast.

Thomas Colson:

But Rob, this has been a great, great podcast. I’ve enjoyed it.

Raymond Guarnieri:

Yeah. Thanks. Thanks for this. And if you’ve been watching out there, you millions and millions of followers and you’ve enjoyed this, make sure to hit the subscribe button if you’re on YouTube, share the link with your friends, wherever you’re listening and-

Thomas Colson:

And use Rob’s law firm. This guy right here, knows it all about trademarks all over the EU. Use this guy. He’s fantastic.

Raymond Guarnieri:

See you later, everyone.