Sneaker brand tries to pass off The Godfather Trademark

The SneakerDon, a trainer’s marketplace for designer brands such as Adidas and Nike has recently come under fire from Paramount Pictures Corp.

The sneaker company, founded and run by 16 year old  Benjamin Kapelushnik (who has been labled ‘The (teenage) Godfather of Sneakers’ by The Great Big Story had filed for a US trademark in August 2015 that did not look dissimilar to that of the legendary film. The mark contains the words “The SneakerDon” and a trainer shoe being suspended from a marionette. Paramount Pictures Corp. owns the intellectual property rights for the films as well as for the merchandise and  immediately filed a notice of opposition against the new trademark application.  

The Godfather mark has been in use since 1972 and has "developed substantial goodwill and a positive reputation among the industry, the trade, the media, and consumers.” according to the film company as well as acting to distinguish their brand from competitors. However, this new trainer brand, according to Paramount, appears to be trying to encourage consumer confusion to mistakenly affiliate the two brands due to their almost identical logo design, which cannot have but been influenced by the legendary film’s own trademark and is trademark infringement.

The best way to protect your company’s reputation, brand value and profits in today’s global marketplace is by registering a trademark and gaining trademark enforcement rights. However, just having the trademark is not enough. You would also need to police your market for potential infringements and when a case of infringement does arise, like Paramount, you must act quickly to protect your brand and enforce your trademark rights.

In this particular case, “The SneakerDon” trademark application had yet to be approved and therefore the film company could simply oppose the mark. However, if a company infringes on your trademark in the marketplace you would have to take a different course of action. A trademark lawyer may advise you to issue a cease-and-desist letter to the company that has been infringing on your trademark. If however, the company does not respond to this request, you may be advised to take further legal action by filing a trademark infringement lawsuit. In some cases an agreement can be reached whereby the infringing party agrees to only use the trademark for a specific set of goods, which will then be recorded on their trademark application.

We will have to wait to hear the outcome of this case.

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