What's in a name?

Nadya Suleman made big news last week when she sought to register the “Octomom” moniker with the U.S. Trademark Office. Ms. Suleman’s two trademark applications indicate that she intends to use the mark “Octomom” in connection with a reality TV show and disposable diapers, among other things.

However, it turns out that video game company Super Happy Fun Fun, Inc., (I love the name) out of Austin, Texas, had already filed an intent to use application last month for the mark “Octomom” in connection with computer game software, toys, and entertainment services.

So who gets the right to use the mark?

Generally speaking, the first-filer gains the upper hand by winning the race to the Trademark Office. We talked a little about the advantages of filing for trademark protection as early as possible in a previous post. So, to the extent that the Trademark Office views Ms. Suleman's reality TV as overlapping with Super Happy Fun Fun's entertainment services, there could be some interesting fireworks in the Trademark Office.

Even though Super Happy Fun Fun filed first, there could be questions as to whether Octomom has become a distinctive nickname associated with Ms. Suleman. If that is the case, Section 1052(c) of the Trademark Act may come into play. This law says a trademark cannot be registered if it “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent…” And, we know from the case of In re Sauer, 26 F.3d 1340 (Fed. Cir. 1994) that this prohibition applies to nicknames, as well as proper names.

What are the lessons here? One - it is almost always better to file early to protect your intellectual property. Two – conducting searches for trademarks before filing can uncover other people's registered or pending trademarks, which can help you assess your risks and costs before filing for your own. Three - intellectual property legal issues are everywhere.