Is Slim Being Shady? Eminem's Recent Trademark Activities

Eminem's recent trademark activities raise a question. Is Slim being shady in attempting to enforce his trademark rights, or is he duly protecting his brands? Protecting one's trademarks isn't just for big businesses, online retailers, or chain stores. It's for musical artists too. As discussed in What's in a (Band) Name? Why Bands Need Trademark Registrations, it's a good idea for artists to pursue trademark registration as it may protect their name, logo, or other source identifying elements, prevent legal disputes, and expand business opportunities. Artists who recognize the value in protecting their trademarks may see growth in their career beyond the music industry. And perhaps no one understands this better than Marshall Mathers III, better known as Eminem, Slim, or Slim Shady.

Beyond being a legendary rapper, Eminem is also a businessman, having turned his alternate persona into trademarks for various merchandise and music services. He is the owner of the US registrations for the marks SLIM SHADY and SHADY for among other things, clothing, musical sound recordings, and live entertainment services. Registration of his marks may have helped grow his fictional character –Slim Shady– into a real revenue stream.

Eminem enforces rights in his marks against others, which can be a good thing because lack of enforcement could cause limitations to or a loss of rights. However, some might argue that his recent enforcement activities are a tad aggressive.

Earlier this fall, Eminem filed a petition to cancel a US registration for the mark SWIM SHADY. The owner of the mark is an Australian beachwear company called Swim Shady. Swim Shady sells beach shades, bags, and swimsuits and registered with the United States Patent and Trademark Office (USPTO) the mark SWIM SHADY for those goods. In his petition for cancellation, Eminem alleged likelihood of confusion and dilution based on his prior use and registration of the SLIM SHADY and SHADY marks and false association with his Slim Shady persona.

If a trademark is confusingly similar to another mark, and the goods and services are similar or related, this may cause consumers to mistakenly believe that the goods or services come from or are associated with the same source. This is known as likelihood of confusion and may be reason to refuse an application for registration, cancel an existing registration, or obtain a court injunction to stop the use of a confusingly similar mark.

In this case, Eminem argued that SWIM SHADY is confusingly similar to SLIM SHADY. Specifically, he pointed to the similarity in sight and sound and that the marks are identical but for one letter difference.