Is Slim Being Shady? Eminem's Recent Trademark Activities

Eminem's recent trademark activities raise a question. Is Slim being shady in attempting to enforce his trademark rights, or is he duly protecting his brands? Protecting one's trademarks isn't just for big businesses, online retailers, or chain stores. It's for musical artists too. As discussed in What's in a (Band) Name? Why Bands Need Trademark Registrations, it's a good idea for artists to pursue trademark registration as it may protect their name, logo, or other source identifying elements, prevent legal disputes, and expand business opportunities. Artists who recognize the value in protecting their trademarks may see growth in their career beyond the music industry. And perhaps no one understands this better than Marshall Mathers III, better known as Eminem, Slim, or Slim Shady.

Beyond being a legendary rapper, Eminem is also a businessman, having turned his alternate persona into trademarks for various merchandise and music services. He is the owner of the US registrations for the marks SLIM SHADY and SHADY for among other things, clothing, musical sound recordings, and live entertainment services. Registration of his marks may have helped grow his fictional character –Slim Shady– into a real revenue stream.

Eminem enforces rights in his marks against others, which can be a good thing because lack of enforcement could cause limitations to or a loss of rights. However, some might argue that his recent enforcement activities are a tad aggressive.

"My Name Is" – SLIM SHADY or SWIM SHADY

Earlier this fall, Eminem filed a petition to cancel a US registration for the mark SWIM SHADY. The owner of the mark is an Australian beachwear company called Swim Shady. Swim Shady sells beach shades, bags, and swimsuits and registered with the United States Patent and Trademark Office (USPTO) the mark SWIM SHADY for those goods. In his petition for cancellation, Eminem alleged likelihood of confusion and dilution based on his prior use and registration of the SLIM SHADY and SHADY marks and false association with his Slim Shady persona.

Likelihood of Confusion

If a trademark is confusingly similar to another mark, and the goods and services are similar or related, this may cause consumers to mistakenly believe that the goods or services come from or are associated with the same source. This is known as likelihood of confusion and may be reason to refuse an application for registration, cancel an existing registration, or obtain a court injunction to stop the use of a confusingly similar mark.

In this case, Eminem argued that SWIM SHADY is confusingly similar to SLIM SHADY. Specifically, he pointed to the similarity in sight and sound and that the marks are identical but for one letter difference.

Interestingly, the application for SWIM SHADY was not refused in view of Eminem's prior registrations. Perhaps the USPTO did not consider the marks confusingly similar, or the registrations may not have been disclosed in a search. Unfortunately, we won't know for sure.

Eminem did not oppose the application for the SWIM SHADY mark prior to registration. The USPTO publishes applications and allows a 30-day period for third parties to oppose those applications or extend the time to do so. Eminem did neither. However, likelihood of confusion may be a sufficient basis to cancel registered marks.

Trademark Dilution

Eminem also argued that his trademarks will be diluted if the SWIM SHADY mark is not canceled. Dilution may occur when a famous or well-known mark is similar to another mark, such that the distinctiveness or reputation of the famous mark is impaired. Here, Eminem argued that his marks are famous because they have been extensively used and publicized for over 25 years and are distinctly associated with his celebrity. Eminem asserts that continued registration of Swim Shady's mark would impair the unique association of his marks with Eminem. Also, any goods offered under the SWIM SHADY mark that are of inferior quality to Eminem's goods could dilute the reputation of Eminem's marks. Eminem may be worried that if the SWIM SHADY goods are inferior, it would cause a consumer to say I'm "Cleanin' Out My Closet" of SLIM SHADY goods.

False Association

Finally, Eminem argued that the SWIM SHADY mark falsely suggests a connection with his Slim Shady identity. False association may go beyond trademarks and can provide protection for a persona. Because SWIM SHADY and Slim Shady differ by only one letter and share the term SHADY, Swim Shady's mark may create an association in the minds of consumers with Slim Shady, which could damage Eminem's reputation. If consumers think that the goods are coming from or are authorized by Eminem and they are of poor quality, then consumers may not want to purchase other goods offered under the SLIM SHADY mark.

Swim Shady may have chosen its mark because it's an Eminem "Stan." But if both marks coexist on the USPTO's register or in the US marketplace, this could lead to consumer confusion. It may also have consumers thinking, who is "The Real Slim Shady?"

International Component

This matter is not limited to the United States. In Australia, Swim Shady applied to register its SWIM SHADY mark and Eminem applied to register his SLIM SHADY mark. Unlike the US dispute, Eminem does not appear to enjoy priority because Swim Shady's application was filed before his. Further, it appears that Eminem's application was refused in view of Swim Shady's pending application. This is a reminder for brand owners that filing trademark applications in jurisdictions where business is ongoing or may be soon is always a good strategy. Nevertheless, this proceeding could influence the corresponding US dispute.

Eminem's Other Recent Trademark Enforcement

It's unclear whether Eminem will prevail in the SWIM SHADY dispute. However, this is not the first time he has pursued legal action against third parties with marks containing the term SHADY. In 2023, he opposed a trademark application owned by stars of the TV show "Real Housewives of Potomac," Gizelle Bryant and Robyn Dixon, for the mark REASONABLY SHADY. The application covers a slew of goods and services including cosmetics, candles, mugs, clothing, and entertainment services. Bryant and Dixon host a podcast with the same name and are known for using the slang terms "shady" and "shade."

Despite Bryant's and Dixon's predilection for talking about shady activity on their podcast, they do not appear so happy with Eminem's tactics. In a recent motion to compel the deposition of Eminem, the Housewives alleged that Eminem would not agree to a deposition other than one that would begin at 2:00 PM and last two hours. Eminem asserts that his limited availability is because of the need to be at his recording studio every morning.

Conclusion

Eminem's trademark enforcement strategy underscores the importance of protecting brand identity in a global marketplace. While some may view his actions as overly aggressive, they reflect a broader principle: trademarks are valuable assets that require vigilant defense to maintain their distinctiveness and commercial strength. The SWIM SHADY dispute illustrates the complexities of trademark law, including issues beyond the potentially familiar likelihood of confusion analysis and those posed by international disputes. Whether one sees Eminem's approach as savvy or "shady," it serves as a reminder that proactive trademark management is essential for artists and businesses alike to safeguard reputation and revenue.

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