THE FASHION LAW EXCLUSIVE – The SneakerDon, an “authentic sneaker marketplace where you can buy, sell and purchase Air Jordans, Nike, Adidas and other brands,” is in the middle of a trademark battle with the film studio and production company responsible for The Godfather. Paramount Pictures Corp., the entity that owns the intellectual property rights in the iconic film, including a “family of trademarks,” has filed to oppose a pending trademark registration by The SneakerDon, accusing the popular online shoe retailer of using a logo that too closely resembles the logo for the Oscar-winning film.

It turns out, the film studio is none too pleased with The SneakerDon’s pending application, which was filed in August 2015, and which aims to federally register a lookalike trademark. The SneakerDon’s trademark takes the form of a “mark consisting of picture of the white hand holding a marionette … attached to an athletic shoe/sneaker and three words: The SneakerDon, words ‘Sneaker’ and ‘Don’ being attached. The hand is gripping the operating cross in a fist-like manner with front part of the cross in a fist-like manner.”

Also at issue: Paramount’s long-registered “The Godfather” mark, which according to the film company’s court documents appears “in a stylized typeface in combination with the well-known design of a hand holding puppeteer strings.” Per Paramount, it has used this mark since at least 1972 in an “exclusive and continuous” manner and as a result, the mark has “developed substantial goodwill and a positive reputation among the industry, the trade, the media, and consumers.” The film company further alleges:

The Godfather logo has become one of Paramount’s most valuable assets. [It] distinguishes Paramount’s goods and services from those of its competitors, As a result, relevant consumers readily recognize, associated, identify, and distinguish the Godfather logo and Paramount’s goods and services from those of others.

Paramount argues that The SneakerDon, which reportedly has roughly $1 million in sneakers on hand at any given time, was “clearly exposed to and aware of Paramount and ‘The Godfather’ logo before filing [its trademark] application. Due to the fame and renown of ‘The Godfather’ logo trademarks, [The SneakerDon’s] selection of a mark that is not only confusingly similar to the Godfather logo but also contains a hand/marionette design that is nearly identical to the famed puppeteer hand design of ‘The Godfather’ logo was not coincidence, and was intended to trade off of the substantial reputation and goodwill of ‘The Godfather’ trademarks.”

As a result, Paramount has objected to the registration of The SneakerDon design as a trademark with the U.S. Patent and Trademark Office, arguing that consumers are likely to be confused, mistaken, and/or deceived into believing that there is a connection between Paramount and The SneakerDon or that Paramount has sponsored or approved The SneakerDon’s goods or that the parties are in some way connected or affiliated, which is not the case.

As you may know, before a trademark may be registered with the U.S. Patent and Trademark Office (“USPTO”) (and enforced by a trademark holder on a nationwide basis, as opposed to on a state-by-state basis), a number of requirements must be satisfied. For example, the mark must be published for opposition in the Official Gazette, a weekly publication of the USPTO. This means “the USPTO will send a notice of publication to the applicant stating the date of publication.

After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.”

More to come …