Jersey Shore Trade-marks: The (Canadian) Situation

A flurry of stories appeared in August 2010 about the stymied efforts of Nicole "Snooki" Polizzi, cast member of the MTV hit Jersey Shore, to register her nickname as a trade-mark in the United States.  The news stories themselves (such as this item at The Smoking Gun) focused on the rejection of Snooki’s application because the USPTO (Patent and Trademark Office) examiner thought there would be a likelihood of confusion with the already-registered mark "The Adventures of Snooky", which is based on a children’s story book series. 

Polizzi’s situation is slightly more nuanced than that, however: it appears that the Snooki application was not rejected outright, but only as it related to the category of "books" (the purported text of the rejection can be found here).  A quick search of the USPTO online database reveals there are a surprisingly large number of registrations for various iterations of "Snooky" (including one for "electric motors operating blinds") and "Snookie’s".  As might be expected, however, there is only one application for "Snooki".  The "Snooki" application reveals that registration was sought for two categories: "printed matter, namely books" and "entertainment in the nature of personal appearances by a television personality".  Only the former category was rejected, so presumably Snooki’s application for registration in the latter category is still alive.

Eriq Gardner, writing at THR, Esq., posed the question: Which ‘Jersey Shore’ Star Could Actually Trademark Their Name?, and reported on the efforts to obtain US federal trademark registrations by DJ Pauly D (two applications (here, here), both rejected on a preliminary basis due to likelihood of confusion with registration for "DJ Paulie’s Worldwide Countdown"), The Situation (application rejected (and now suspended) due to likelihood of confusion with registered mark (though I’m unable to find a record of the Situation’s application)) and Jwoww (application still alive, though clarifications have been requested by the USPTO). 

Eriq’s post leads, naturally, to the question: Which ‘Jersey Shore’ Star Could Actually Trade-mark Their Name in Canada?

Things look good for the GTL (or GFF or IFF) crowd.  The Trade-marks Act (Canada) contains (in Section 12(1)(a)) a restriction on the types of words which can be registered as trade-marks in Canada: a word that is "primarily merely the name or the surname of an individual who is living" (or who has died within the last thirty years) is not registrable.  Unless, that is, one can qualify under Section 12(1)(b), which provides that if a person’s name or surname has been used in Canada so as to become "distinctive", then that name is registrable as a trade-mark.  (Hence, for example, the fact that "Britney Spears" is a registered trade-mark in Canada.) 

Helpfully, however, for most of our trade-mark seeking Jersey Shore gang, they aren’t seeking to register their own names, but rather nicknames (though in the case of DJ Pauly D, his proposed mark is at least in part comprised of his actual first name).  Nicknames of famous people don’t seem to be registered all that often in Canada (though homegrown wrestling legend Bret "Hitman" Hart has a registered mark).  A quick search of the Canadian Intellectual Property Office’s online trade-mark database reveals that our favourite Shore-ites are unlikely to face any obstacles from registered marks: there is no "Snooky" or "Snooki" registered, nor any obviously conflicting registered mark which uses the word "Situation", nothing which seems to conflict with the registration of "Pauly" (or even "Paulie") (though there are 107 search results for marks with "DJ" present in them) and, though it probably goes without saying, "Jwoww" likewise seems not to appear too often in marks which have been registered to date.

Bob Tarantino

About Bob Tarantino

Bob Tarantino is Counsel at Dentons Canada LLP and focuses his practice on the interface between the entertainment industries and intellectual property law, with an emphasis on film and television production, financing, licensing, distribution, and IP acquisition and protection. His clients range from artists and independent producers to Canadian distributors and foreign studios and financiers at every stage of the creative process, from development to delivery and exploitation.

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