Will the “Real” Slim Shady Please Stand Up? Eminem Fights Back to Protect His Brand Against Two “Real” Housewives

Will the “Real” Slim Shady Please Stand Up? Eminem Fights Back to Protect His Brand Against Two “Real” Housewives

Rapper Marshall Mathers, publicly known as Eminem, recently opposed the proposed trademark of Robyn Dixon and Gizelle Bryant, cast members of The Real Housewives of Potomac and hosts of the Reasonably Shady podcast to prove he is the “Real Slim Shady.”^[1] The issue arises out of the stars’ application for the mark “REASONABLY SHADY,” which shares the same name as their podcast.^[2] Dixon and Bryant’s mark would cover “merchandise and other “entertainment services.”^[3] Eminem, who is famously nicknamed “Slim Shady,” has trademark registrations for “SLIM SHADY” and “SHADY,” in which he claims he has exclusively used since 1996.^[4] This is not the first time that the rap star has sought to protect his trademarks against other similar applications. ^[5] In that case, Mather successfully opposed the “Slim Shady Politics” mark application for “political and international information.”^[6] The rapper has filed an opposition to the “REASONABLY SHADY” mark stating that he believes his “brand will be damaged if the trademark is issued and would ‘cause confusion in the minds of consumers.’”^[7] The opposition submitted to the United States Patent and Trademark Office (“USPTO”) stated that Mathers “believes he will be damaged by the issuance of a registration for the mark REASONABLY SHADY” because it “resembles the rappers longtime monikers, Shady and Slim Shady.”^[8] The filing states “[t]he marks SLIM SHADY, SHADY and SHADY LIMITED have become unique and are identified by the general public solely with [Mathers] and his goods and services.”^[9] Further, it says “[t]he marks SLIM SHADY, SHADY and SHADY LIMITED have become and are an extremely valuable symbol of Mathers, his reputation and goodwill.”^[10] Eminem’s lawyer claims that “confusion is unavoidable” between the two marks and that the public could come to falsely believe the Real Housewives actors were “in some way connected or affiliated with” the rapper.^[11]

Eminem’s first argument against the application is that there is a likelihood of confusion between the two marks.^[12] Section 2(d) of the Lanham Act states that “[a] mark shall be refused registration if it…consists of or comprises of a mark which so resembles a mark registered in the [USPTO…] when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive…”^[13] In cases of trademark infringement, a trademark owner must show that a likelihood of confusion exists, such that consumers would likely be confused about the source of products or services.^[14] While different courts balance similar factors to determine if there is a likelihood of confusion, the USPTO uses the DuPont Factors, which are:

1. “The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression;
2. The similarity or dissimilarity and nature of the goods…described in an application or registration or in connection with which a prior mark is in use;
3. The similarity or dissimilarity of established, likely-to-continue trade channels;
4. The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing;
5. The fame of the prior mark;
6. The number and nature of similar marks in use or similar goods;
7. The nature and extent of any actual confusion;
8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion;
9. The variety of goods in which a mark is or is not used;
10. The market interface between the applicant and the owner of a prior mark;
11. The extent to which application has a right to exclude others from use of its mark on its goods;
12. The extent of potential confusion;
13. Any other established fact probative of the effect of use.”^[15]

The DuPont court stated that not all the factors are given equal weight in an analysis, and that a certain factor may be more controlling than others depending on the particular case.^[16] Typically, to establish likelihood of confusion, the nature of the products at issue, as described in the trademark application or registration, must be similar or the products must exist in the same trade channels.^[17] Therefore, products like Dove Chocolate and Dove Soap can simultaneously exist, as consumers are not going to mistake the two for each other, but if Dove Chocolate began making soap the products would exist within the same trade channels Dixon and Bryant are planning to use the mark to sell clothes, mugs, and other merchandise bearing the name of their podcast, while Mathers has “long used the marks Shady, Slim Shady and Shady Limited” to sell “merchandise.”^[18] Additionally, Mathers’ daughter Hallie hosts a podcast called Just a Little Shady, which focuses on her life as Slim Shady’s daughter.^[19] Eminem and fellow rapper 50 Cent have also confirmed that they will be producing a television show based on Mathers’ movie 8 Mile, and it would not be surprising to see Mathers becoming involved in the podcast space as well.^[20] While Eminem successfully opposed a mark that contained the words “Slim Shady,”^[21] it is uncertain whether a claim of consumer confusion could be upheld because a general trademark search shows that numerous other marks solely bearing the word “Shady” exist for various products and services.^[22] The inclusion of the word “shady” does not by itself mean that there is any confusion over the source of the goods, and the rapper “does not own every iteration of the word ‘shady’” when it comes to trademarks in categories for merchandise.^[23] Further, the Reasonably Shady podcast has been around since 2021, and has gained a significant following so it is unclear if consumers would believe that Eminem would be associated with the dating podcast. Ultimately, the TTAB will focus on the difference in “commercial impression” between the two marks, as well as relevant Dupont factors to determine if the actors can deviate themselves from Mathers’ marks.^[24]

Eminem’s second argument is that the actor’s mark would “dilute,” or “weaken the distinctive quality of or harm” his famous mark such by “confusing or diminishing the public’s perception of his mark.”^[25] This would in effect “damage” his brand.^[26] Dilution can happen in two ways: through “blurring” or “tarnishment.”^[27] Dilution by blurring occurs when the distinctiveness of a famous mark is impaired by associate with another similar mark or trade name.^[28] On the other hand, dilution by tarnishment occurs when the reputation of a famous mark is harmed through association with another similar mark or trade name.^[29] It is clear that Eminem’s marks are nationally “famous” as required by any dilution argument, as he is widely recognized in pop culture and was famous at the time Dixon and Bryant began using their mark in commerce. However, Eminem would have to show that the approval of the “Reasonably Shady” mark would harm his reputation or reduce the distinctiveness of his prior used marks. While certain factors between likelihood of confusion and dilution overlap, it will ultimately be up to the Trademark Trial and Appeal Board (“TTAB”) to determine, based on the facts, which party has a stronger case. Certainly, both trademark dilution and a likelihood of confusion could be found.

The podcast hosts’ lawyer has stated that “Dixon and Bryant intend to defend their trademark application, as there is no likelihood of confusion and consumers are not likely to confuse REASONABLY SHADY with Mather’s SHADY/SLIM SHADY/SHADY LIMITED trademark registrations.”^[30] She added that “[t]he trademarks are not confusingly similar and the services are not related.”^[31] Since Eminem filed his opposition on February 14^th, Dixon and Bryant will have 40 days to file an answer to Eminem’s opposition, which will need to occur by March 26^th.^[32] If Dixon and Bryant choose to fight back, the case will proceed before the TTAB to prove that they can distinguish themselves from “The Real Slim Shady.”