I was wrapping up my morning routine including checking my social media pages before fully beginning my day when I saw a message/tweet from attorney turned filmmaker Mildred Okwo (@mealdredo).
She directed my attention to the fact that ‘Nollywood’ is now a registered trademark owned by an individual in the state of Washington, USA. It was too hilarious for words and just to be sure, I checked the USPTO.gov website and sure enough, ‘Nollywood’ is now a registered trademark owned by a Nicholas Opara.
To add insult on injury, the named individual allegedly sent a cease and desist letter to a company using the word ‘Nollywood.’ For those who may not understand the significance of this, it means using the word Nollywood in any of your products or services without the permission of the trademark owner could have you facing legal liability for trademark infringement. Yes, the second largest film industry in the world has just become nameless. If the name was ‘Nollywood Legal’ or some derivative of the ‘Nollywood’ name, then that is a different matter.
But to solely register the name Nollywood and expect the entire country of 170million in Nigeria and the entire globe that uses ‘Nollywood’ a generic name, to stop, is laughable at best. Clearly, an oversight but calls for the need to educate folks at the USPTO to do some more research before approving names like this one.
For a more detailed discussion on trademark basics, below is a republished article I wrote a little while back on a different platform on Trademark law.
Hopefully, the USPTO gets this rectified ASAP.
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What is a Trademark ™? It is any word, phrase, logo symbol, color or sound that is used by a company to identify products or services in the marketplace. TM can be your business name that you use to sell your product and services as well as your product or service name.
What is a Service mark? It’s the mark you use to market your service. It’s used interchangeably to mean TM.
How do you create a TM? Just use your trade name, i.e. the name you use to the public, to identify your products or services for sale. So for example, G Unit, Rocca Wear, Ladybrille, Target, Essence, Vogue, you get the drift.
Do I have to register my TM? No. There is no registration requirement. HOWEVER, it enhances your rights when you seek enforcement against an infringer. Also, if you are the first to use your TM, then you can stop others from subsequently using your mark, a.k.a. “infringe on your trademark.”
How Do I Register my TM? File or complete application with the US Patent and Trademark Office. You can also hire an attorney to do it for you.
What If I intend to Use it but I am not Ready? No big deal. All you have to do is file an intent to use [ITU] TM registration application with the US Patent and Trademark Office. You’ll need to file another application once it is in actual use and of course pay applicable fees.
Are there instances where I own my TM but I am unable to prevent others from using it? Yes.
WHY? Because TM gives varying degrees of protection to TM owner, depending on the situation.
How Do I get Maximum TM protection for my brand?
The question you must answer is whether your mark qualifies for TM protection? If yes, how much? Here is the breakdown/analysis: Is your mark a strong or weak mark? Distinctive business names receive the strongest legal trademark protection. For example. Gucci, GAP.
They make strong connections in the minds of customers and play a big role in their buying choices. The more distinctive a name, the more likely it is that customers will be less confused by more than one business using the name. What if my name is Ordinary? You might want to adopt an African name like mine ASAP! On a more serious note, the law says ordinary and descriptive names receive less or no protection. Why? Because they are weak! What are examples of weak TM names?
Ordinary or descriptive words Personal names. NOTE: Personal names with use can become stronger e.g. Marc Jacobs. What are examples of strong distinctive TM? They are marks that clearly separate the products or services they represent from others. For example, GAP = clothes.
How can I make my weak TM grow stronger? Keep using it. To be clear, could you list instances where I cannot register or receive TM protection
Non-use or abandonment: After 3yrs its presumed abandoned! Generics & genericide: The word “Fashion” is generic but there are many brands Gucci, Prada, Miu, Miu. Why not grant TM to “fashion?” If protection is granted to “fashion” one company would have a monopoly and could stop all others from using the name of the goods. (Same use with ‘Nollywood’ in this instance people)
- Confusingly similar marks: The “Likelihood of confusion,” prevents you from registration and claim of TM.
- Weak mark
- marks that are primarily surnames
Do I need a TM notice? No. It is common for you to see “TM” when word, logo, symbol or phrase is being TM or application has not been filed. Upon completion, registration and actual issuance, then the mark now carries the ® symbol.
Do I need to register my TM to enforce my rights in court? No.
How do the courts determine consumer confusion? The courts ask: are there similarities of the conflicting marks in appearance, sound, meaning? E.g. Red Threads Designs v Red Treds Designs.
Do the products or services actually conflict?
Ford Modeling agency v Ford Motors. If not, then both can exist. What is the strength of the mark?If it is strong, it stays in consumer’s mind. If weak and confuses consumers, you will still not receive TM protection. That’s it from me, for now, on trademark.
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Credited for several firsts in the fashion and entertainment industry, Ms. Uduak is also a Partner and Co-Founder of Ebitu Law Group, P.C. where she handles her law firm’s intellectual property law, media, business, fashion, and entertainment law practice areas. She has litigated a wide variety of cases in California courts and handled a variety of entertainment deals for clients in the USA, Africa, and Asia. Her work and contributions to the creative industry have been recognized by numerous organizations including the National Bar Association, The American University School of Law and featured in prestigious legal publications in the USA including ABA Journal and The California Lawyer Magazine.
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