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Court Tentatively Rejects Reese Witherspoon's Trademark Claim

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By Ephrat Livni, Esq. on November 25, 2015 2:58 PM

Reese Witherspoon is suing a dozen companies she says are using her name in violation of trademark law. She is not the first celebrity to claim her name as intellectual property but a court considering one of the actress's cases is not convinced yet, according to The Hollywood Reporter.

Skye Associates, who Witherspoon sued in Los Angeles Superior Court, moved judge Gerald Rosenberg to dismiss the case. In a tentative opinion issued before the hearing on the motion yesterday, the court rejected Witherspoon's trademark claims, writing, "Plaintiff's name is not a protectable slogan."

What Is Trademark Protection?

A trademark is a word, name, symbol, or device used in commerce to indicate the source of the goods and distinguish them from other products. Witherspoon is suing companies that are using her name for jewelry and other products, saying it damages or devalues her trademark.

The actress is arguing in numerous cases that use of the names Reese, Witherspoon, or Reese Witherspoon in association with products she does not endorse are intellectual property violations that cost her. She wants courts to award her damages for losses companies caused her by using her name to sell products, cheapening her personal brand and creating customer confusion.

Tentatively, No

But Judge Rosenberg rejected Witherspoon's trademark claims. He wrote that there is no evidence of consumer confusion, and that the actress hadn't established secondary meaning to her full name. "Plaintiff's name and images alone do not combine to establish protectable trade dress, ordinarily reserved for packaging."

Not Over Yet

The judge stated that he would take the parties' arguments under advisement, despite the tentative opinion. But even if he ultimately rejects Witherspoon's trademark claims, she has other bases for her suit.

Witherspoon argues that Skye violated California's right of publicity statute by misappropriating her name and likeness for commercials. The company argued that its use of the actress's image was constitutionally protected free speech.

Rosenberg seems as unconvinced of this as he does of Witherspoon's claims that her name is a trademark, writing, "The use of Plaintiff's name and likeness were for the purposes of selling its rings. Defendant's use does not promote a news medium, was not a news article, did not advertise an act protected by the First Amendment, was not part of any underlying work of art or expression and was entirely a commercial advertisement intended to entice potential customers to purchase the rings."

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