Mary Carey trademark update

I earlier wrote about the trademark issues between Mary Carey and Mariah Carey. Mary Carey (the porn star, not to be confused with Mariah the singer) appeared on the Howard Stern Show on Sirius (yes, I am a subscriber). The issue of the trademark dispute came up, and everyone wondered how the dispute could actually exist- in that they sound different, do different types of entertainment, etc. All of which agrees with my earlier article. A "patent attorney from Pittsburgh" called in and said that under a likelihood of confusing test, where the marks are compared, they are confusingly similar.

It appears that our esteemed patent attorney missed the doctrine of laches. That basically states if you wait too long to bring a claim, you lose the right to do so. IMHO, Mariah Carey has waited too long to lodge any complaints. Mary Carey has been really big in the news for at least 3-4 years, in porn as well as the gubernatorial elections here in California. I even recall seeing a picture of Mary Carey promoting the re-election of President Bush in 2004, using her porn name.

Mary, who may have been drinking a little for the show, also claimed that she got the name "Carey" because of her crazy antics- like that of Jim Carey. I'm not sure if that argument will fly, but they point out many porn star names that are similar to those of other famous people- such as Arnold Schwartzenpecker- so Mariah may be a little late getting to the "stop Mary Carey" party.

More details as this case develops....

Mariah Carey v. Mary Carey

Trademark disputes can arise in a number of ways, and can often be amusing. Case in point- recently Mariah Carey has decided that Mary Carey should not be allowed to obtain a registered United States Trademark (see Can Mariah Carey win her porn trademark battle?).

Mariah Carey, is the singer with a purported 5 octave vocal range, and is the owner of several registered trademarks, including (among others) MARIAH CAREY and MARIAH. Mariah Carey is well known for her music, sex appeal, and leaving rambling messages on her website, and her "breakdown." Mariah's first album was in 1990.

Mary Carey, nee Mary E. Cook, filed a U.S. Trademark Application for MARY CAREY on October 31, 2005. Mary Carey is best known for two things, having sexual intercourse on film (e.g a porn star) and running for governor of California. Of note, Mary has been been in porn since around 2000. She took her screen name in part due to her slightly similar appearance to Mariah Carey.

Also of note, the United States Patent and Trademark Office did not find that Mary's trademark application was similar to that of Mariah Carey. As stated by the Examining Attorney in an office action dated May 16, 2006:

Serial Number 78/743591

The assigned trademark examining attorney has reviewed the referenced application filed on October 31, 2005 and has determined the following:

SEARCH OF OFFICE RECORDS

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

Mary's application covers the obvious- porn. Mariah's trademarks cover assorted goods and services common for multi-platinum international music stars- music CDs, music performances, clothes, etc. Of note, Mariah does not claim any trademark rights to porn videos- however one of her marks covers streaming video.

The USPTO approved Mary's application for publication, and on September 12, 2006, Mariah Carey filed a request for extension to oppose. An opposition is where one party demonstrates before the USPTO how they will be harmed in the subsequent trademark is allowed to proceed to registration. For more information about trademark oppositions, please visit Inventionpatent.net.

Mariah Carey will now have to show how she will be harmed by the USPTO allowing Mary Carey's trademark to proceed to registration. It is likely that Mariah will try this by showing that the marks are "confusingly similar." This is generally done through a "sight, sound, connotation" analysis. This shows how the marks look the same, sound the same, and mean the same thing. One also considers the respective consumers of the goods and services, and the goods and services of the trademark. It certainly seems like a strong argument can be made that the marks do indeed sound the same, look the same, etc- and Mary admittedly took the name because she looks like Mariah.

There is one REALLY BIG problem for Mariah- she has to show how she will be harmed by the registration of this mark. In most of the trademark oppositions that move forward, the senior mark (e.g. the first one doing the opposition) has been around significantly longer than the junior mark (e.g. the one being opposed). Often, the trademark being opposed is one that is not yet being used in commerce. Mariah Carey is opposing a trademark application that has been in use in commerce since around 2000. Mary Carey states first use in 2003, but I recall hearing her on the Howard Stern show before that. My research indicates that to date, the only action Mariah Carey has taken against Mary Carey is this extension for time to oppose. Absent a showing that Mariah has taken earlier action- such as prior litigation, a cease and desist letter, etc., it will be REALLY difficult for Mariah Carey to show how she will be harmed by the registration of Mary Carey's mark. Mary Carey has received a significant amount of publicity as a porn star, as a gubernatorial candidate, and vocal Republican that the public is well aware of the difference between the porn star and the music singer. I suspect this trademark opposition will go away, and Mary Carey will get her registered trademark.