Sunday, 1 June 2014

Part I: Who wants a trade mark for Nollywood?

Nollywood may be about to make headlines in the U.S for something spectacular other than its films. In fact, it’s nothing to do with the dreaded film piracy.

Background
Source: here
According to 360nobs.com, this Leo gathers that a bold application was submitted to the USPTO to register the word 'nollywood' as a trade mark (under what looks like a broad Class 3) on the Principal Register. The author of the news report, Rotimi Fawole, a legal practitioner in Nigeria, usefully explained its significance and implications for the benefit of those concerned in Nigeria. As expected, this news has now generated numerous online articles e.g. hereherehereherehere and here, (accurate or otherwise) including this post you're just reading . This Leo just skimmed through those articles and gets their message. 

Just a tiny note at this juncture, in case this post circulates beyond (Afro Leo: "duh, the internet") 
What you're about to read in this two-part post is not intended to analyse whether the mark(s) are descriptive, generic, distinctive etc or chance of success. That’s for the USPTO. The posts simply take a fresh look at this story, using Bollywood and Hollywood as examples to make sense of it all. To avoid confusion, Registrant and Applicant will mean the same thing; trade mark and service mark (SM) might be used interchangeably, and there are references to the Nice Classification. See below for more disclaimers.

Is there hope for this Registrant?
Like said above, that’s for the USPTO to decide. Needless to say that it would've been very easy for such an application to be refused as descriptive if filed under Class 41. This Leo’s preparatory research tells him that the mark is not yet registered as there is still a process to get through (also see herehere and here). 

The Registrant, who is an individual with no IP lawyer on record, might be feeling a little confident since he/she managed to satisfy the ‘first use’ requirement and already owns two registered SMs: ‘NOLLYWOOD’ under Class 35, and ‘nollywood’ under Class 35 and Class 38. [So, does it mean that this owner now has the right to stop anyone from setting up an online business with Nollywood, as covered?

                                           Stop Press!
New development: Cancellation
One of those registered marks is actually facing cancellation proceedings! The Petitioner is the owner of www.nollywood.com. Based on the papers on file (The USPTO tells us that you don't only lose your trade mark application fee if unsuccessful, you also lose confidentiality too i.e. name, address, what you asked for in your application, fights you've picked up and so on), it does appear as if this SOS by Ms Oduok, similar to this Leo's hint in 2012, alerted Nollywood fans. [Bloggers, always tipping off]

Allegedly, the Registrant has already done a bit of Cease and Desist letters as well as seeking to takeover or take down domains. Wow! Perhaps, back in 2002 or 2003, the Registrant took legal advice on domain names and unregistered trade marks. But, who knows whether the owner of www.nollywood.com might pick a fight with another Nollywood in the future. We shall see. [Afro Leo wonders: To start with, isn't Nollywood now in the dictionary? And, did this Petitioner strategically target that mark, leaving the other to just sit there?

From what he has seen, this Leo understands that even if the cancellation proceeding succeeds, the Registrant might still have a slim chance to rely on common law and/or state statutes to enforce his/her unregistered trade mark rights – unfortunately, with the extra burden of proof. [Afro Leo asks: Will the Registrant even bother to do this? Must be an expensive exercise!

Anyway, if the online articles (and the sentiments therein) are anything to go by, this Registrant doesn't look like he/she is the good books of many Nollywood fans, at the moment. So surreal! There may well be others who have done the same or something similar with Bollywood and Hollywood in the U.S or other countries such as the UK.This is what this Leo will explore in Part II. [Afro Leo adds: Basically, anyone can submit an application to register whatever as a trade mark. It's up to the IP office to scrutinise, in accordance with the law/practice, and either register or refuse]

Ok, this Leo needs to hurry up with his own application before they're all gone! 
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