On November 9, 2016, plaintiff Estate of Marilyn Monroe filed suit against defendant Fashion Central in the Southern District Court of New York for trademark infringement, trademark dilution, and unfair competition, among other things. See Estate of Marilyn Monroe, LLC v. Fashion Central LLC.
The Estate of Marilyn Monroe is a brand development and licensing company that owns various trademark rights relating to the deceased, iconic celebrity, Marilyn Monroe. Plaintiff also owns exclusive rights to Marilyn Monroe’s identity, image, name, and likeness for licensing to third-parties.
The Monroe Estate has been using its distinctive Marilyn Monroe trademarks (and variations thereof) continuously for over 33 years. The United States Patent & Trademark Office has issued 14 trademark registrations relating to the Marilyn Monroe name and identity, with four of the marks having been deemed incontestable. A trademark becomes incontestable when the trademark owner files seeking incontestable status between the fifth and sixth year after registration. Once a trademark achieves incontestable status only limited challenges are available against the mark itself, for example if the trademark has become generic or if there was fraud in the procurement of the trademark. Virtually all other challenges to a trademark are lost once incontestable status is achieved.
Defendant Fashion Central is a New York City-based manufacturer and wholesaler of intimate apparel, which includes undergarments. In their undergarment packaging, tags, and other branding, defendant utilized Marilyn Monroe’s image alongside phrases that alluded to famous quotes by Ms. Monroe. The defendant does not have a license to use Marilyn Monroe’s likeness or to use the registered trademarks for marketing/branding purposes.
On August 8, 2016, plaintiff became aware of defendant’s unauthorized use of the Marilyn Monroe marks and likeness and sent a cease and desist letter. Defendant continued with their allegedly unauthorized activities, leading to the filing of the complaint that starts this legal dispute. It is worth noting, however, that the defendant did not use the name Marilyn Monroe in any of its marketing, packaging, or other branding. Any association to Marilyn Monroe is based solely on defendant’s use of her visual likeness.
The plaintiff uses various trademarks containing MARILYN MONROE in association with clothing, for example. The defendant, however, uses the likeness of Marilyn Monroe on clothing, which allude to her identity. According to the plaintiff, various retailers have contacted the Monroe Estate under the assumption that Defendants products were approved, licensed, sponsored, endorsed or authorized by the Monroe Estate. The First Claim for Relief in the complaint is for false designation of association, origin and unfair competition under 15 U.S.C. 1125(a)(1)(A). The plaintiff alleges that the defendant’s actions have already caused actual confusion in the marketplace and are likely to continue to cause consumer confusion. The plaintiff further alleges that the actions of the defendant were in bad faith, deliberate and willful.
The fact that the Marilyn Monroe name does not appear on any of defendant’s potentially infringing products does not mean there is not a viable trademark infringement case or theory. While it may be extremely difficult, or even impossible, to prove classic trademark infringement because the trademark is not being used, 1125(a) of Title 15 provides ample firepower for the plaintiff to make a legitimate claim. Federal trademark law is all about the consumer and protecting the consumer. If there is actual confusion within the consuming public there should be a likelihood of confusion, which is one legal theory available under 1125(a) to the plaintiff. Although it sounds strange, the existence of actual confusion does not necessarily ensure a finding of likelihood of confusion. The likelihood of confusion is a multipart test with one factor being the presence of actual confusion. Having said that, the existence of actual confusion coupled with trademark registrations, some of which are incontestable, should go a long way toward proving a likelihood of confusion under 1125(a).
According to the plaintiff, the Marilyn Monroe trademarks are highly recognizable and distinctive due to her enduring fame. Therefore, both federal and state law dilution claims have also been brought against the defendant.