Screaming about trademark infringement. Easter Unlimited v. Terry Rozier

Trademark law is intended to protect consumers from being tricked into buying inferior quality goods. A trademark is something that a manufacturer uses to mark its goods. Traditionally a trademark is considered a word phrase or symbol, but anything that signals to consumers the identity of the product manufacturer can be eligible for trademark protection. Trademark law grants a trademark owner the exclusive right to brand its products with a trademark. If someone other than the trademark owner starts branding products with a trademark, that can be considered trademark infringement.

The key issue in trademark infringement is consumer confusion. If the use of a trademark causes consumers to be confused about who produced a product that can be trademark infringement. When determining likelihood of confusion, courts review several factors refereed to as Polaroid factors, after the court case which introduced them. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). Each circuit in the United States federal court system has a slightly different set of factors but they are similar. The factors are: (1) Strength of the senior user’s mark, (2) Similarity of the marks, (3) Similarity of the products or services, (4) Likelihood that the senior user will expand their product line into the junior user’s product line, (5) The junior user’s intent in adopting the mark, (6) Evidence of actual confusion, (7) Sophistication of the buyers, and (8) Quality of the junior user’s products or services.

The third factor of the Polaroid test can be a point of contention between companies. Trademark law does not grant a trademark owner the right to absolutely control their trademark. If the difference between two products is great enough then consumers will not confuse the products of one company with the products of another company even if both companies use the same trademark. For instance Lexus cars are different enough from the Lexis legal database that it is unlikely that people will think the same company produced them, therefore there is no trademark infringement.

However, trademark owners must jealously guard their trademarks or risk loosing their right to the trademark. If other people use a trademark and the trademark owner does not object the public may stop associating the trademark with products from the trademark owner. For this reason trademark owners frequently enforce their rights when there is the slightest whiff of trademark infringement.

A case which illustrates a trademark owner vigorously guarding their trademark is Easter Unlimited, Inc. v. Terry Rozier, 2:18-cv-06637 (E.D.NY 2018). The plaintiff in the case is designer, manufacturer and supplier of original costumes and masks, holiday items and novelty gifts. The plaintiff has a registered trademark in the Ghost Face Mask. The Ghost Face Mask was made popular in a horror movie called Scream which was released in 1996 and had several sequels. The plaintiff is constantly fending off other companies which make counterfeit versions of the Ghost Face Mask. The defendant is Terry Rozier, a point guard for the Boston Celtics NBA team. The defendant has earned the nickname Scary Terry. Because of the nickname Mr. Rozier has had several photo shoots with him wearing the Ghost Face Mask, merchandise bearing a caricature of him in the Ghost Face Mask is also for sale on various websites.

The plaintiff does not like Mr. Rozier’s use of their mask and has sued for copyright and trademark infringement. How this case will be determined has yet to be seen. Mr. Rozier will have the opportunity to respond to the allegations.

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