Trademark attorneys can be pretty creative and Sony’s recent trademark infringement suit against Bridgestone Tires is a great example. Sony is suing Bridgestone for among other things, trademark infringement. The basis for the lawsuit is Bridgestone’s use of the same actor in one of their ads that Sony had previously used in their PlayStation 3 marketing campaign. Sony says that Bridgestone improperly infringed upon their “trademark” character “Kevin Butler”. Sony did not register a trademark for the Kevin Butler character and has not even filed a trademark application for Butler. Sony recently settled its claims against the actor that played Kevin Butler, but the lawsuit with Bridgestone continues.
While a trademark registration is not required, it can be a useful tool in litigation. Filing a trademark application to protect a company icon early on can help reduce enforcement costs later when trying to protect a business icon. Elaborating further regarding the alleged trademark infringement, Sony claims that “with the intent of unfairly capitalizing on the consumer goodwill generated by Butler, Bridgestone has used and is using the same or confusingly similar character, played by the same actor, to advertise its products or services in the commercial.” (Click here to see related TechDirt article.) –[http://www.techdirt.com/articles/20121008/16091220646/sony-sues-actor-trademark-infringement-looking-too-much-like-himself-another-commercial.shtml]
Two issues arise in a case like this. First, is Sony entitled to trademark rights over a character it created for a series of television advertisements? Second, if Sony does have trademark rights in the Kevin Butler character, does the Wii playing character in the Bridgestone commercial infringe Sony’s Kevin Butler trademark? Had Sony filed a trademark application and obtained a trademark registration, it would have been entitled to a presumption of trademark rights. However, because Sony failed to have its trademark attorneys file a trademark application for the Kevin Butler character, it will have the burden of proof in the case to establish trademark rights.
US Code defines trademark as any word, name, symbol, or device, or any combination thereof … to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods. See 15 U.S.C. § 1127. Sony may argue that the Kevin Butler character is a symbol that consumers associated with Sony, sort of like the Mickey Mouse character is a character symbol commonly associated with Disney. Of course, Sony will have the burden of proof to establish this since they did not file a trademark application and obtain a trademark registration. Having the burden of proof means they will likely have to pay more fees to their trademark attorneys to prove their case. There is no doubt that Sony invested a lot into building up the Butler character and consumers likely did associate the character with their product, but if they claim trademark protection here, one potential consequence is that it could prevent an actor from working for another company in their advertisements and portraying a similar character. This raises some interesting issues. How intertwined would the character need to be with the product to quality for trademark protection? How different would the new role need to be to avoid infringement?
Bridgestone indicates that it intends to fight the lawsuit by showing that Sony has failed to register a trademark for “Kevin Butler,” that the character has not acquired secondary meaning and that there is no likelihood of confusion among consumers. If Bridgestone’s trademark attorneys are able to establish these issues, Sony’s trademark infringement suit will likely fail. It will be interesting to see how strong of a case Sony’s trademark attorneys can make. Novel trademark issues like these bring up unique challenges. Of course, had Sony filed a trademark application early on, it is possible these issues could have been examined during the trademark registration process at a much lower expense than litigation.