Wednesday, February 13, 2008

Yoko Ono seeks to cancel musician's registration of LENNON service mark reports on the effort by Yoko Ono to stop heavy-metal artist Lennon Murphy from performing her music under the name Lennon.

Murphy obtained a registration for the mark LENNON (for musical sound and video recordings and for entertainment services in the nature of live musical performances and providing online performances and information) on January 21, 2003 (claiming first use in commerce back to June 1997).

Nearly five years later (not a coincidence) on January 18, 2008, Ono – wife of the late John Lennon and ardent protector of the musician’s estate (just ask Paul McCartney) – filed a petition to cancel Murphy’s registration. See Yoko Ono Lennon v. Lennon Murphy, Cancellation No. 92048785 (T.T.A.B.). A copy of the Ono’s petition for cancellation can be downloaded here.

The petition describes the fame of John Lennon’s name as follows [feel free to begin humming “Imagine” here]:

The distinctive artistic brilliance that has come to be associated with the Lennon name, likeness, image and trademarks is of inestimable value to his successor: it represents Lennon’s inimitable genius and extraordinary talent.

Nonetheless, in addition to the general fame associated with John Lennon’s name, Ono cites to two registrations for the mark JOHN LENNON (stylized) (see below) – one for eyeglasses and the other for tote bags and address/date books.

Ono seeks cancellation of Murphy’s registration on the grounds of likelihood of dilution and fraud.

Without stating too many facts, Ono alleges that Murphy has been using her mark LENNON in a way that is likely to cause dilution by blurring and/or dilution by tarnishment that impairs the distinctiveness of John’s Lennon’s famous name.

With respect to Ono’s fraud allegations, Ono claims that when Murphy originally filed her trademark application on April 11, 2001, she filed it as a Section 1(b) intent-to-use application and did not disclose in such application that the mark “Lennon” was actually her first name. When the PTO finally rejected her application on the grounds that is primarily merely a surname (§2(e)(4) rejection), Murphy requested reconsideration of her application on the grounds of acquired distinctiveness under §2(f). On July 3, 2002, Murphy filed an Amendment to Allege Use which converted her application to a use-in-commerce application based on use of the name LENNON for the preceding five years (back to June 1997). The Amendment included a declaration by Murphy that she had been using the LENNON mark for over five years, and thus it had become distinctive of the services for which she applied.

While the petition cites little evidence for its claims that Murphy’s declaration of use was untrue and bases its claims upon information and belief, a short footnote notes that Murphy would have been fifteen years old in 1997, which is supposed to raise some doubts about her declaration that she was using the mark in commerce since that time.

However, Murphy, through her MySpace page (link here), addresses this particular point about when she began using the name in commerce:

When I first started playing music at 14, I was known for the most part as "The Lennon Murphy Band". Not a name I was very fond of, no one could ever agree on anything so it made sense. A few months later some of the shows started being marketed using my full name as well as some that just using "Lennon." There was never really any consistancy but there was well enough to justify stating that "Lennon" had been used in fact since 1997.

As for the allegations of dilution, Murphy recounts events prior to the trademark application being filed where she claim permission was sought and received by Ono to use the name:

In 2000 Arista Records addressed the issue of Yoko Ono potentially having a problem with our use of the name. My product manager at Arista was ironically the son of the lawyer who actually represents Yoko. So he approached Yoko, to make her aware of the use, evidently giving her blessing as Arista proceeded forward with the album release and at the same time filing for the trademark. Its takes time for all of the legal work to go through, but finally in 2003 I was granted by the United States Patent & Trademark office the ownership in the name Lennon for musical use.

The timing of Ono’s petition is not surprising – filed just under the five year time period in which most petitions for cancellation must be filed under §14(1) of the Lanham Act (15 U.S.C. §1064(1)) – although it should be noted that there is no time limit for petitioning for cancellation of a registration when the basis is that the “registration was obtained fraudulently” (see §14(3) of the Lanham Act (15 U.S.C. §1064(3))).

Nonetheless, by filing the petition just under the wire, Ono is able to assert trademark dilution in addition to fraud (15 U.S.C. §1064 specifically includes dilution as an adequate grounds for cancellation). But if dilution of her famous husband’s name is Ono’s concern, this begs the question – why did Ono take so long to seek cancellation of Murphy’s registration?

If Murphy does not have evidence to support her claims of use going back to 1997, her registration may be in jeopardy given the strong stance that the TTAB has taken lately with respect to fraud on the PTO. See prior blog post here on trademarks at risk for being canceled on the basis of fraud.

However, assuming that Murphy has sufficient evidence to overcome the allegations of fraud, Ono’s trademark dilution claim will come down to whether Murphy’s mark is likely to dilute Lennon’s famous name through blurring (i.e., whether the association arising from the similarity between a mark or trade name and a famous mark impairs the distinctiveness of the famous mark – where distinctiveness refers to the ability of the famous mark uniquely to identify a single source and thus maintain its selling power).

Ono has a viable case that the Lennon name is famous and has become distinctive (especially in the world of music), Murphy is using a mark in commerce that is allegedly is diluting the famous Lennon mark, and there is a similarity between the marks that gives rise to an association. This leaves only the issue of whether that association is likely to impair the distinctiveness of the famous mark (I choose to focus on blurring only and disregard allegations of dilution by tarnishment because its seems highly unlikely that Murphy’s use of the name Lennon has caused any tarnishment).

The Trademark Dilution Revision Act of 2006, 15 U.S.C. §1125(c), sets forth six non-exclusive factors for courts to consider in determining whether a junior mark is likely to dilute a famous mark through blurring: (i) The degree of similarity between the mark or trade name and the famous mark; (ii) The degree of inherent or acquired distinctiveness of the famous mark; (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (iv) The degree of recognition of the famous mark; (v) Whether the user of the mark or trade name intended to create an association with the famous mark; (vi) Any actual association between the mark or trade name and the famous mark. See 15 U.S.C. §1125(c)(2)(B).

There is a strong similarity between John Lennon’s name and mark and Murphy’s registered mark. The famous mark’s distinctiveness is not inherent, but rather acquired through John Lennon’s fame. As for exclusive use, the PTO does show one company using the mark LENNON for meats as well as a registration for the name LENNON for vinyl wallpaper, which was cancelled on January 7, 2006 for failure to file its 10 year §8 Affidavit of Use. There may be evidence of others businesses using the name Lennon given that it is a fairly common surname. The degree of recognition of the name is likely to be high -- a large majority of the population is at least aware of who John Lennon is and his place in our country’s pop culture. The evidence suggests that Murphy did not intend on creating an association with John Lennon – it is her own name after all and quite frankly, I doubt the association with John Lennon, known more for his Beatles’ tunes and folk music, would even help an aspiring heavy metal rocker. Finally, while Ono may not have any current evidence of an actual association between the two, Ono’s attorneys can probably conduct some study that will show that the participants associated the artist Lennon with John Lennon.

While Murphy has apparently spoken with some lawyers who say Ono has no case, from the above analysis, I would not be so quick to discount the validity of Ono’s dilution claim.

However, Murphy’s best defenses may be laches and acquiescence. Under the equitable defense of laches, Murphy can argue that Ono’s delay in bringing this action was unreasonable and that Murphy would be unfairly hurt by cancellation. As for acquiescence, if indeed Ono’s permission was sought and expressly or impliedly granted, then Murphy can argue that Ono acquiesced to Murphy’s use of the name. While Murphy has the burden of proof in establishing these defenses, her initial evidence seems compelling enough.

I would “imagine” (pun intended) that Murphy will ultimately prevail – based on a combination of Ono’s delay (whether intentional or unintentional) and the fact that it’s not so clear cut that Murphy’s use of the name impairs the distinctiveness of the Lennon name as it relates to John Lennon. But as Murphy recognizes on her MySpace page, she now has to hire a lawyer to fight this out.

All I can say is Ono should give peace a chance (isn’t that what John would have wanted?)

[02/16/08 Update: Click here for my subsequent post on Yoko Ono's response to the media reports about the cancellation complaint.]

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