Change the name. The American Idol people have a case, and you don't really want to get in a fight with them--they have deeper pockets than you do. They do have registered trademarks on the word "Idol", which would make your fight much harder.

I'm an upcoming 3rd year law student specializing in IP law, particularly patent and trademark. I work at a large New York IP specialist firm. This is not official legal advice.

It seems to me that, if they could have, I'm sure they would have registered the single word "Idol", but they didn't. It would be like trying to register the word "Tea" or "Shirt". The fact that they had to put an adjective (American) in front of it seemed to me to make it reasonable that I could use another adjective and trademark it. Your thoughts? Hey, why not bring it up at the firm you're working for, see what they think!

They actually have registered the word "Idol" alone for a variety of goods and services. The way trademarks work, you don't register the word in a vacuum, but in connection with a good or service, and the level of protection they get depends (roughly) on how inventive the use of the word is in that context. The use of "Idol" in connection with a contest isn't all that inventive, but it's original enough that it gets protection now that everyone associates the phrase "_____ Idol" with such contests.

Furthermore, there's a doctrine called "dilution" that gives added protection to famous marks, and prevents you from using a famous mark on a good or service that's different from the good or service the product was originally used on. See 15 U.S.C. sec. 1125 (c) for the actual statute. The statute was intended to allow companies to protect against their distinctive term becoming generic, and avoid the fates of Kleenex and Xerox.

Parody and fair use doesn't really apply here, because you're using the term in a business context and not as a parody. There's a wonderful case, Mattel v. MCA Records, about the song "Barbie Girl", that explains how fair use works in trademark law. To be fair use, it typically has to be referring to the product the mark labels, and not try to use the mark's distinctiveness to promote your goods or services. The "Geek Idol" contest isn't a parody or satire, and probably won't fall under a fair use exception.

Your case is unlike the "DialIdol" situation, because they were being hit with copyright claims; the law is very different. Also, the DialIdol people were commenting on and critiquing the show, which is more the typical area of fair use.

The materials they sent me did not include any reference to their registration of the word "Idol" alone, and they sent me a bunch of registrations. If they had filed "Idol" alone, and also, had my own search (done by a professional service company) dug up such a filing, I wouldn't have proceeded. Do you know, or can you show me where they've done so? I just don't see how you can prevent someone from using a common noun in describing their product.

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I see no relationship between "American Idol" and "Geek Idol". Seems that American idol lawyers have too much time on their hands. Are they claiming ownership of the word "IDOL"?. Any self respecting Judge would throw this foolishness out of court.

According to the previous sender, apparently they indeed are claiming such ownership, although I really don't see how they can.

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The Preface: THIS IS NOT LEGAL ADVICE.  The following comments should not be construed in any way, shape or form as legal advice or anything other than mere speculation and conjecture from a raving lunatic.  The comments should also not be construed as forming an attorney-client relationship or any other binding relationship.  I AM NOT A LAWYER.  You should consult a local attorney in the suitable field of practice to obtain actual legal advice.

(Sorry, but that was mandatory.)

I went to law school and studied intellectual property.  Don't take that to mean I know what I'm talking about, though.  And I'm really not a lawyer, just a patent agent.

Looks like a standard cease & desist (C&D) letter.  Half of it is posturing - them trying to show the strength of their mark and their ability to squash you like a bug.  I'll skip to the punchline.  You have 2 choices: move forward with your plans (contest & registration, the latter of which I'm surmising from your intent to use filing) or bow to their power.  If you move forward, it will be a battle.  It will cost you money.  You will need a real trademark attorney ( i.e., not me) to represent you.  It will be ugly(ish).  If you bow to their C&D, rename the contest and don't pursue anything with "Idol" resembling their mark.

The problem is multifaceted.  Their mark is strong and distinct.  It's well-known across the country and well-known for referring to a contest somewhat similar to yours.  Granted, they may have trouble showing actual confusion or even a strong likelihood of confusion, but they might be able to.  (Lawyers can "prove" anything.)  They can certainly suggest similarity and their mark is so strong that the edges get a little blurred.  Their infringement claim might or might not succeed.

However, their dilution claim is more likely to succeed.  I honestly forget the standards and explanations for dilution so I can't really back this assertion, but it seems to me like a stronger case.  You don't have to prove actual confusion, just the notion that your use of something similar to their mark would dilute their protections and the strength of their mark.  It's one reason no one can use "Mc____" for anything - McDonald's would bite them.  Hard.

Basically, my recommendation is to roll over.  It would cost tons to fight and it's close enough that you might or might not win.  And did I mention it would be *expensive.*  With a capital EXPENSIVE.  I suggest renaming the contest, maybe something like: "The Geek Contest That Bears No Relation to Any Television Show With 'Idol' In The Title, Especially Not Any American Show" (along with a link to the C&D, of course).  Or perhaps: "The Geek Contest That Isn't 'American Idol'"  Basically, any title that can't be confused.

I also suggest submitting the story to BoingBoing (boingboing.net) and Slashdot (slashdot.org).  That's always good.  You can also send this to the EFF.  Not sure if they'd bite but it couldn't hurt.  You're a geek website.  Use the geek arsenal.  Granted, our primary power is "shame" but there's no shame in that.

Again, I have no clue what I'm talking about.  Consult a local trademark attorney.

Cheers!

Yeah, it IS scary. It's a shame that, while they have almost nothing to lose (they probably have this law firm on retainer), I have to weigh the cost very carefully against the potential benefits (which are almost nil). This was supposed to be a fun thing. Ah, the wonders of the American Legal System.

I think it's even a little worse with copyright, where you're *supposed* to have fair use exceptions.  Unfortunately, over-protection (via C&D's like this) is entirely too common.  I can better understand it with trademarks, though it's still a bit much.  I really hate it when the big guys flex their muscles and the little guys are forced to beat a hasty retreat based on monetary considerations alone.  As you say, the wonders of the American legal system.

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