Via Siva, “news” from the BBC entitled “Carey battles porn star over name.” The entire article is below in bold text, with my descontructing comments interspersed in italics:
Singer Mariah Carey has threatened legal action against porn star Mary Carey to stop her trademarking her similar-sounding stage name.
By “threatened legal action” I assume the author means, “indicated she will file a trademark opposition.”
The singer believes fans could get the two performers confused if Mary Carey’s trademark application is successful.
Sounds silly unless you actually know something about trademark law, in which case it is actually a fairly reasonable claim. According to the PTO and the courts, consumers are really stupid, and can’t tell (e.g.) “Ben’s Bread” from “Uncle Ben’s” used for rice products (Uncle Ben’s, Inc. v. Stubenberg Int’l, 47 U.S.P.Q.2d 1310 (T.T.A.B.1998)) or “Nutra Salt” from “Nutrasweet” (Nutrasweet Company v. K & S Foods, Inc. 4 U.S.P.Q.2d 1964 (T.T.A.B. 1987). In the dilution context, “Tempanol” was found to be similar enough to “Tylenol” to be dilutive. Anytime two marks sound similar and are used to identify similar goods or services (in this case that would be “entertainers”) there are colorable grounds upon which the holder of a senior mark can oppose the registration of a junior mark.
However, the adult film actress, whose real name is Mary Cook, has said she will not be intimidated by the singer.
“I’m ready to battle Mariah over this because I’ve been Mary Carey for a long time,” she told Reuters.
“It’s kind of funny because I’m a porn star and I’ve been being myself for a long time. I think she’s being silly.”
The actress started using the stage name Mary Carey in 2002 and ran for California governor against Arnold Schwarzenegger.
Grammy-winning Mariah Carey is particularly concerned by the possible confusion in the names because the actress wants to trademark the name for audio and video recordings.
Sounds to me like Mariah Carey is simply trying to prevent Mary Carey from receiving federal registration for a trademark that she asserts is substantially similar and possibly dilutive of Carey’s pre-existing mark. Given the state of trademark law, it’s an entirely reasonable claim. Even if Mariah Carey wins, it is not clear that she would try to make Mary Carey stop using her stage name professionally, and even if she did, she is unlikely to succeed.
But David Beitchman, a lawyer for Mary Carey, said he believed Mariah Carey stood little chance of winning a court battle over the names.
Well, if he said that Mary Carey would surely lose, I suspect he wouldn’t be her lawyer for very long.
“My first thought was, does Mariah Carey realise what her lawyer is comparing her to and are they seriously concerned?” he said.
“Do they seriously think the fans are going to be confused?”
The implication of Beitchman asking “does Mariah Carey realise what her lawyer is comparing her to” is a little disturbing. Mary Carey probably should get a new lawyer. In any event, declaring that Mariah Carey is “threatening to sue” is obviously employed here to attract attention and sympathy, and the BBC has played right along. Should we be grateful they didn’t label it a “cat fight”?
–Ann Bartow
When I first heard about this story, it cracked me up because I share a name with a porn star. Sometimes I forget about it, but then I Google myself and find X-rated films. So far, no one has mistaken us for each other.
“The implication of Beitchman asking”does Mariah Carey realise what her lawyer is comparing her to”is a little disturbing.”
I see how one can read that as a demeaning remark about her profession, but I guess he wanted simply to point out that the two work in sufficiently different areas not to be confused. Or would a lawyer insult his client?
Actually, as far as trademark jurisprudence goes, because both marks would be used in “entertainment,” many courts would find the two trademarks “substantially sinilar.” My reaction to the lawyer’s remark was that he was trading on a particular reaction to porn as a way to make the trademark claim seem ridiculous, but it actually isn’t, given the state of trademark law.