What do a small Canadian metal manufacturing shop and the band Metallica have in common? They share the same name. The metal shop chose the name Metallica Manufacturing in the late 1990s, well after the heavy metal band had established itself worldwide. But the metal shop owners didn’t imagine choosing the same name as the band would cause any confusion or perceived endorsement of the metal shop by the band. They just thought it had a nice ring to it. So they file a trademark application for the mark Metallica. It turns out however, that the band’s trademark attorneys didn’t take lightly to use of the band’s name, even if the band’s metal work was musical and not mechanical.
Metallica the metal shop came on the radar of the band’s trademark attorneys when the shop attempted to register an internet domain name with the term Metallica in it. The band’s trademark attorneys pressed the metal shop to change their name and drop the use of Metallica all together. The metal shop wasn’t deterred however, and filed a trademark application with the Canadian Intellectual Property Office in 2008, seeking to obtain a trademark registration for the following services: custom metal fabrications, welding and machining. The band’s trademark attorneys filed an Opposition to the trademark application, stating that the metal shop’s name would be confused with the band’s trademark. More than three years after the initial Opposition, the Canadian Intellectual Property Office concluded that there was no likelihood of confusion and that the metal shop would be free to pursue their use of the name.
Did the Office make the correct decision? Are consumers likely to be confused as to whether the band has any connection with the metal shop? Although the term Metallica is strongly associated with the band, it seems unlikely that consumers would make the intellectual jump that the band is somehow actually involved in metal manufacturing. Producing metal goods in a shop is just not similar enough to making metal music on the stage to cause confusion – rock music on the one hand and fabricated metal on the other. So, the Canadian Intellectual Property Office allowed the metal shop’s trademark application for registration.
While Metallica the band’s trademark attorneys may not be too concerned about a small, metal manufacturer in Canada, it’s doubtless that they would prefer to keep open space around the band’s Metallica brand and prevent any brand dilution. Of course, their main goal should be to preserve and strengthen the Metallica brand, and prevent other from not only using anything confusingly similar, but also anything that could dilute the Metallica brand.
Protecting against brand dilution is just one of many services that a good trademark attorney can provide. Whether you are a small business like the metal shop or a group of global rock stars, trademark strategy can be critical to your business success.