On 9 November 2016, The Estate of Marilyn Monroe has sued an apparel company of New York for having illegally used the “Marilyn Monroe” trademark by using the image of the famous star.
The Marilyn Monroe Estate registered at PTO (The United States Patent & Trademark Office) its own exclusive property on Marilyn’s identity, image, name and likeness and also the right to grant licenses to third-parties.
Thus the Monroe Estate owns and manages Marilyn Monroe trademark, which continuously for over thirty years was used in the market. This circumstance makes the trademark incontestable, providing it greater guarantees of protection.
For these reasons, the Monroe Estate demanded a jury trial for detecting infringements laid down by Lanham Act, 15 U.S.C. 1051 ss, New York Statutory and common law, and a compensation for damage, in terms of trademark infringement, trademark dilution and unfair competition.
No matter, therefore, that the name of Marilyn actually has not been used commercially by the defendant company: the image of the most famous diva of all time, when used as distinctive mark, falls within the “Monroe Rights”, owned by plaintiff.
More specifically, as it follows from a previous court rulling*, it’s necessary to distinguish the infringement of trademark exploitation’s rights from the image exploitation’s right. Only in the first case, indeed, law requires that the consumer is induced to believe that the use of the brand has been authorized by the owner.
On this point, Monroe Estate stated that a confusion, among consumers and retailers, occurred: in fact, many have contacted the company believing that defendant’s products had been approved, authorized or sponsored by the company which owns the trademark.
In this specific case, therefore, while it might be difficult, or even impossible, to establish an infringement of the mark, because the mark has not been used, Article 1125(a) 15 U.S.C. gives actor wide powers to bring a legitimate request.
In fact, the US federal trademark law is intended to protect consumers. If there is a confusion in the audience, there should be a likelihood of confusion, which is the case traceable to article 1125 (a) U.S.C.
The existence of actual confusion coupled with a registered trademark should ensure the implementation of the rule, guaranteeing Monroe Estate the acceptance of requests .