Is Marilyn Monroe Generic?

Marilyn Monroe was—and continues to be—one of the most iconic actresses in the world. And while there is no doubt that Marilyn Monroe is a household name, is it possible that her name has become too well-known? Apparently so. On March 13, 2017, Judge Katherine Polk Failla of the United States District Court for the Southern District of New York (SDNY) issued a ruling that permits a counterclaim to cancel Marilyn Monroe’s trademarks on the grounds that they have become generic to go forward, denying the Estate of Marilyn Monroe’s motion to dismiss.
It is not uncommon for celebrities to register their names as trademarks with the United States Patent and Trademark Office (USPTO). Stars such as Kim Kardashian, Kylie Minogue and 50 Cent have all trademarked their names. The battle over Marilyn Monroe’s trademarks began in 2012, when Arts & Vintage Entertainment Licensing Agency (AVELA), a licensing company, sought a declaratory judgment that its products bearing images of Marilyn Monroe did not constitute trademark infringement. In response, the Monroe Estate, which holds numerous federal trademark registrations related to Marilyn Monroe and asserts exclusive rights to Marilyn Monroe’s name, identity, persona and likeness, filed a counterclaim against AVELA, asserting, among other claims, trademark infringement. Over the past five years, the dispute has evolved into a “sprawling conflict” involving multiple claims and multiple parties. In its latest round of counterclaims, AVELA has asserted that Marilyn Monroe’s trademarks should be cancelled for lack of distinctiveness, on the basis that they have become generic.
Although many of the federal trademark registrations owned by the Monroe Estate have likely reached incontestable status, which serves as conclusive evidence of a trademark’s validity and of the registrant’s exclusive right to use that mark in commerce, a court can still cancel an incontestable trademark if it becomes generic. Generic marks are marks that identify “the type or species of good or services to which they apply.” Generic marks tend to refer to an entire class of products, rather than a particular good or service. Generic marks are by definition not distinctive and are therefore ineligible for trademark protection. Marks can be considered generic right away or they can become generic over time and lose their previously-existing trademark protection as a result. Examples of marks that would be considered generic and ineligible for federal trademark registration right away if an application for such a mark was filed include Shampoo, Soda, or Automobile. It is also possible for previously registered and protected marks to reach a level of fame or recognition that is so high that they begin to be used in reference to the entire class of products that they belong to. In such a case, a previously distinctive and protectable mark becomes generic and loses its trademark protection. Examples of marks that have become generic include Aspirin, Thermos, and more recently, App Store.
The genericism challenge aimed at Marilyn Monroe’s trademarks falls into the latter category. In its counterclaim, AVELA argues that the Monroe Estate’s trademarks “lack distinctiveness” because “they do not identify the source or origin of any product.” AVELA alleges that “products bearing Monroe’s image and/or name are a genus of products” and thus have become a generic. AVELA argues that “when used in connection with goods or services, the words ‘Marilyn Monroe’… merely serve to identify types of products that bear some indicia of Marilyn Monroe.”
The Monroe Estate argued that AVELA’s allegations are not enough to make a showing its marks “have become the generic term for a genus of product,” but the court seemed to disagree. Judge Failla denied the Monroe Estate’s motion to dismiss AVELA’s genericism counterclaim, largely on the basis that a question of whether a mark is, or has become, generic is a question of fact, and a more robust record is needed to make such a determination.
What this all means for Marilyn Monroe’s trademarks remains to be seen, but it seems unlikely that AVELA will prevail on its genericism claim. The court suggested as much in their opinion, stating “[t]o be clear, the Court harbors serious doubts that [AVELA] will be able to establish that the Contested Marks are generic.”
 
Yana Manevich is a J.D. candidate, 2018, at NYU School of Law.