–Sharon Armstrong, Attorney
One thing I love about trademark law is how extraordinarily easy it is to find useful examples of basic trademark lessons in real life – even in a television show that has been called “mind-numbing” and “absolutely ridiculous” and has spawned a Facebook page called “Jersey Shore is Stupid & A Waste of Time.”
Yes, dear readers, Jersey Shore has yet another trademark lesson for us. Last year, I wrote about Snooki and Mike “The Situation”’s applications for their respective nicknames for a variety of entertainment services. This year’s lesson comes from Paul DelVeccho, aka DJ Pauly D by virtue of a lawsuit filed against him on July 1 by one Paul Lis, aka DJ Paulie. Mr. Lis owns registrations for DJ PAULIE and DJ PAULIE’S WORLDWIDE COUNTDOWN for “Entertainment services in the nature of disc jockey services” and claims a first use date in DJ PAULIE of 1973; Mr. Lis filed his applications in May 2008. DJ Pauly filed two applications for DJ PAULY D in February 2010, both of which are currently refused on the ground of a perceived likelihood of confusion with Mr. Lis’ registrations.
The complaint covers the traditional elements and information you’d expect to find in a straightforward trademark infringement complaint. In news media, however, Mr. Lis appears to have focused on how DJ Pauly D’s fame, or infamy, has overwhelmed his ability to be known by his DJ PAULIE marks. “Before [Jersey Shore] went on the air, my website was very successful and getting attention from the national advertisers,” says Mr. Lis, but “[n]ow, I’ve pretty much been wiped off the Google map.”
What Mr. Lis is articulating is at the heart of what is known as “reverse confusion,” which Tiffany previously wrote about here. In a nutshell, reverse confusion is what happens when the market for the services of the senior user, who may have a small business with significant goodwill and trademark rights, is overshadowed and overwhelmed by a junior user who is lucky enough to have significant resources on his or her side – resources like multi-$$$$ companies such as MTV and Viacom. While consumers may not confuse DJ Paulie and DJ Pauly in the traditional sense – for one thing, DJ Paulie is significantly older than DJ Pauly – they may well and incorrectly believe that DJ Paulie is a latecomer who is trying to capitalize on DJ Pauly’s fame, rather than the senior user.
So what’s the lesson? A simple one. Timing is everything. Here, Mr. Lis, aka DJ Paulie, filed his applications over a year before Jersey Shore first aired. Provided that DJ Paulie can support his first use date of 1973, it looks like he’ll have priority, since DJ Pauly D’s claimed date of first use is December 2009, and DJ Pauly D didn’t even enter the world until 1980 anyway. And in this case, priority. Stay tuned for an update about whether the case settles or makes its way to a dispositive decision.