Trademark protection is region specific. No matter how well-known a product is in a particular market, when it expands into new domain, there is no guarantee you will be able to use the same name. The hit TV show Glee was recently ordered by a UK court to change its name after Comic Enterprises, owner of a group of comedy clubs called "Glee Club" filed a motion.
Glee, the musical show, has a major fan base not only in America but all over the world, thanks to TV streaming services. Since being aired in the UK some years ago they have a robust fan base in the UK as well. The motion that was filed two years ago was finally decided in favor of Comic Enterprises this February but the damages were not set till a couple of days ago. 20th Century does not have to change its name till appeal, which it will be filing.
The comedy club has been operational long before the American show graced British TV. Both happen to be in the entertainment industry and deal with music and comedy, so there is a legitimate concern about one being confused with the other. The Judge in the February ruling stated that he found there was indeed a likelihood of confusion and that "20th Century Fox's use causes dilution and tarnishing" of Comic Enterprises' image, additionally stating they may "put off" customers. Personally, I do not think most people would confuse a comedy club with a television show but even if they did the association would not negatively affect the comedy club. Glee the show is, according to my younger sister, "musical, funny, and entertaining," and if anything it may increase the amount of random people who walk into the comedy club assuming the two are associated. But now that Comic Enterprises owns the mark, they have every right to prevent dilution. Furthermore, under trademark law you are responsible for policing your rights and failure to do so may lead to your mark being revoked.
The court has also ordered 20th Century Fox to pay $160,000 in interim damages to Comic Enterprises. The final amount will be determined later but even if it is not more, Comic Enterprises will definitely be laughing their way to the bank. Although the damages are chump change for a behemoth like Fox, the same amount would seriously set back a startup or small to medium sized business.
The lesson to be learned here is that no matter how well-known your company is in a particular region, your region specific trademark and name recognition will not protect you in uncharted territory. When entering new markets conduct the same diligence you did while filing, namely search the trademark database to ensure no one is using the same name. If you have the capital you may attempt to buy the mark from the company or if not possible, you may change your name and prevent losing money advertising for a name you cannot sell under or having to pay damages.
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