who owns the smut shop records a fictitious business name with the county recorder where she is doing business, it's legal to use it and is not actionable by someone who coincidentally has the same name in real life. In your example, though, a court could rule that the celebrity use of the name is a trademark by common use, depending on how well-known the celebrity is. Cher's smut shop would not fly, but Mary Roe's Smut shop might work if she has a properly recorded FBN. In the Chen v. Carey case I referred to, Chen had been using the name "Queen of Christmas" for 20 years before Mariah got the official trademark after recording an album of the same name. It was an easy call for the court to void Mariah's trademark.
Corporations, on the other hand, are state-wide entities and if a corporation had the name first, it could enjoin the individual from using the same FBN within that state. However, if the individual obtained a federal trademark on the name before the Corporation was formed, the trademark has priority on the use of the name in most jurisdictions, and there is often an opportunity for the trademark holder to sell the trademark to the corporation for a significant amount. There are professional trademark holders who do this for a living.
There is no statute of limitations for trademark infringement, but the court would likely look at how much celebrity was involved and during what time period. Trademark litigation is often adjudicated to an equitable remedy rather than a legal remedy, which is what happened to Mariah Carey. She had the trademark, but it was patently unfair to overrule Chen's continued use of the same name in commerce for 20 years, so that is where equity becomes a factor.
-- Modified on 4/18/2024 9:26:19 AM
