–Susan Perera, Attorney
Having a registered trademark doesn’t mean you can stop everyone from using the same or similar mark. Without comprehensively searching for prior common law uses of similar marks it can be difficult to know if another party may have prior rights in a mark, a lesson that the A&E Television Network may be learning.
Although not quite as refined as Antiques Roadshow, I have seen my fair share of Pawn Stars episodes on the History Channel. Debuting in 2009, this reality show has become one of History’s more successful series.
In connection with this show, A&E Television Network is the owner of two registered trademarks for PAWN STARS. And as all trademark owners know, in order to maintain trademark rights the owner of a mark must enforce its rights. A&E appears to have interest in doing just that, as a pawnshop in Florida, called Pawn Star, reported receiving a demand letter from A&E earlier this month. The kicker – the Florida based Pawn Star appears to have prior common law rights, evidenced by its 2006 business filing with the Florida Secretary of State, well before A&E began using its mark.
Accordingly, the Florida Pawn Star should have prior common law rights in its Pawn Star mark. Common law rights are geographically limited, thus, it is likely that Pawn Star can continue operating its business in Florida. We’ll have to wait and see if the Florida entity calls into question either of A&E’s registrations through a petition to cancel. For more on prior common law rights take a look at previous posts by Dan and Steve.