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Godfather fights again in trademark dispute

30-05-2016

Paramount Pictures, owner of trademarks associated with the acclaimed Godfather trilogy, opposes US trademark applications by online retailer ‘SneakerDon’.

Paramount, whose trademarks include the iconic Godfather puppet logo and the text “Godfather”, argues in its opposition that SneakerDon’s logo is confusingly similar with the film’s logo, adding that the font is the same and the stylized puppet very similar (see below).

An offer the USPTO can’t refuse?
Paramount adds in the opposition that it has used The Godfather logo continuously since 1972, and as a result, the mark has "developed substantial goodwill and a positive reputation among the industry, the trade, the media, and consumers”.

SneakerDon is unlikely to have been aware of its existence when designing its own logo therefore, and Paramount has objected to the application on the basis of the marks’ similarity, and the potential that the public may be misled into believing there is an economic relationship between the two companies.  

Paramount is likely to be successful in its opposition; particularly as the scope of protection for famous marks is broader than the scope of protection given to trademarks with less familiarity.

A greater scope of protection
The scope of protection of a well-known trademark reaches beyond that of a less well-known trademark. Case law shows that holders of well-known trademarks regularly push the limits of the scope of their brand. After all, they want their brand to be as famous as possible and don’t want anyone piggyback-riding on their success. In this respect, it is logical that Paramount should take a strict approach to trademark infringement. Find out more about trademark oppositions

Theo Visser is a senior consultant and partner in the Amsterdam offices of Novagraaf