Wednesday, 4 June 2014

Part II: Who wants a trade mark for Nollywood?

Source: here
This Leo is not getting carried away by the latest news about the pi trade mark (π. -- pi followed by a period --). Back to our own story about the individual (Registrant), already an owner of two courageous trade marks for the word 'Nollywood', who decided to Oliver Twist  ask the USPTO for an extra one to add to his/her burgeoning IP portfolio. As expected in Part I, here is a debrief. [Similar to the Nollywood model of film releases, Afro Leo has kindly authorised a Part III for this post]

What’s in the USPTO’s database for Bollywood?
This Leo found 49 live records - just over half of these are registered - for ‘Bollywood’ and combinations thereof. He also found 66 records for dead ones including abandoned SMs such as ‘Bollywood’ and ‘The Bollywood Channel’ (under Class 41); and cancelled ones such as ‘Bollywood Diaspora’(under Class 35) and ‘Bollywood Awards’ (under Class 41).

Source: here
For beauty products, e.g. perfumes, there is a registered SM on the Principal Register for ‘BOLLYWOOD’. [This might raise the hopes of the Registrant] Another ‘BOLLYWOOD’ is surviving on the Principal Register under Class 31, and it’s very specific in its coverage. Finally, the SM, ‘BOLLYWOOD’, (under Class 38) is equally surviving on the Supplemental Register. There are many other word combinations (live or dead) – which have either been applied for or registered.

This Leo decided not to bother with Hollywood; but a quick search retrieved over 3,000 results (live/dead or applied for/registered). Moreover, this Leo noted that Hollywood is a unique one considering that it’s of geographical significance and that the Hollywood Chamber of Commerce has a unique stake in its commercialisation (e.g. see how they’re doing it here and here)

What about the UK IPO’s database? 
Nollywood
He found ‘NOLLY+WOOD (under Classes 16 and 35); a black and white figurative mark with word elements ‘NOLLYWOOD TV’ (under Class 41) owned by these folks here. [Well, they better be thinking of this); a stylised word mark nollywood n movies (Classes 9 and 25), and the word mark ‘NOLLYWOOD COSMETIC’ (Classes 1 and 3). There may well be more.

Bollywood
There were over 50 search results for variant marks with different status notes (live, dead, removed and registered), three of which, at least, could be said to be registered as 'BOLLYWOOD' (see here (interesting one & stylised), here, and here). It's worth noting that the aforementioned marks do not cover entertainment goods or services. On the other hand, we have ‘BOLLYWOOD 4U’, a mark owned by B4U International Holdings Limited. [Digressing: This Leo must have found what looks like interesting Indian case law relating to tax and exploitation of IP rights here and here

Source: here
Lastly, he succumbed to the temptation of searching for ‘Hollywood’ only to find over 300 results, again comprising of various marks (especially word combinations) in different classes both expired and registered, including ‘HOLLYWOOD’ – a mark once owned by Hollywood Chamber of Commerce Inc. Disney owns ‘HOLLYWOOD RECORDS'. Both Nollywood and Bollywood are no match to Hollywood in terms of popularity; so there must be more.

History repeats itself with Nollywood
As a rising global film industry, this isn't the first time (and most likely won't be the last) that a Nollywood trade mark application has come before the USPTO’s desk. [Same applies to Bollywood and Hollywood] In 2008, a baseless one (i.e. ‘use’ requirement wasn't satisfied, according to the USPTO) was filed under Class 41. The following year, another bold broad one (under Class 25) was filed seeking proprietary and exclusive right  to use ‘nollywood’ on pretty much every piece of clothing known to human beings. It isn’t surprising that when the Feds came knocking, the Registrant dropped them like hot potatoes. [Well, U.S trade mark lawyers must be making a lot of money from advice and representation!] 

Watch out for this Leo's commentary in Part III.
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