Last fall, The Smoking Gun website reported that Nicole Polizzi (aka “Snooki” of MTV’s Jersey Shore) had tried and failed to register the trademark SNOOKI for “printed matter, namely books.” Specifically, the United States Patent & Trademark Office refused to permit the registration of the SNOOKI mark on the grounds that it was confusingly similar with the mark ADVENTURES OF SNOOKY for a series of children’s books.
The celebrity press paid some coverage to this story, and generally had fun comparing and contrasting the appearence of “Snooki” the “pickle-loving, one-piece rocking Jersey girl,” with “Snooky” the orange-colored nautical cat that is the subject of the 2003 children’s book. Admittedly, any reasonable comparison between the two characters would appear to make any potential confusion highly unlikely. (compare image of “Snooky” below with images of “Snooki“).
This case highlights an important aspect of trademark practice, namely that an applicant cannot use extrinsic evidence to argue that there is no likelihood of confusion between her mark and the registered mark cited by the Trademark Office. When an examining attorney reviews an application and determines that a likelihood of confusion exists between the applicants mark (SNOOKI) and an existing registration (SNOOKY), the attorney compares the goods and services as they appear on the application and registration respectively. Indeed, the Trademark Manual of Examination Practice (the TMEP) specifically prohibits any attempt by an applicant to restrict “the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence, for example, as to the quality or price of the goods.” See TMEP § 1207.01(a)(iii). If extrinsic evidence were allowed, then Snooki’s attorneys could have argued that the children who read The Adventures of Snooky were unlikely to see Snooki on MTV’s Jersey Shore, and therefore there was no possible likelihood of confusion.
However, because extrinsic evidence is not allowed, the only comparison that can be made as to the goods and services associated with the two marks is to compare them as they appear in the application and registration, respectively. Because the goods and services recited in Snooki’s application were broad enough to encompass the children’s books registered under the ADVENTURES OF SNOOKY mark, her attorneys were forced to abandon her claim.
When filing a trademark application, there is often an attempt by the applicant to describe their goods and services very broadly in the hopes that they can exclude others from particular areas of commerce that they have not, but may move into. In this case, Snooki described her goods and services so broad as to include all books. While her particular marketing plans are not public knowledge, based on her persona, it is unlikely that Snooki was planning on using her name in connection with children’s books. Had she described her goods and services more narrowly, (e.g., “self-help books”, “entertainment books” or even “New Jersey travel guides”) she might have had a better chance at registering her mark.