Harry Potter Trademark

Question

J.K. Rowling is the author of the famous Harry Potter novels. She owns all trademarks associated with the books since 1997.

In 1996, a man named Stouffer started a small publishing company with the intent of publishing one short book about fantasy creatures called "muggles." The company folded and the book was never published. Stouffer did not register a trademark for "muggles." However, Stouffer sued Rowling for trademark infringement because she used the term "muggles" in her books to describe humans who were not witches or wizards. Who wins? Why? How would a court analyze the issues presented?

Stouffer is suing Rowling for trademark infringement due to use of the word "muggles" used in the Harry Potter collection of books. Rowling owns all trademarks associated with the books however the word "muggles" was previously used by Stouffer in a non published short book. The case will be decided based on the federal statute that regulates the use of trademarks known as the Lanham Act.

The Lanham Act of 1946, also known as the Trademark Act, is a federal statute that regulates the use of trademarks in commercial activity. Trademarks are distinctive pictures, words, and other symbols or devices used by businesses to identify their goods and services. The Lanham Act gives trademark users exclusive rights to their marks, thereby protecting the time and money invested. The act also serves to reduce confusion in the identification of goods and services.

The Lanham Act was put into effect for the purpose of protecting trademarks and the people that created the device that is trademarked. Although it is strongly encouraged to register a trademark it is not necessary as federal protection also extends to trademarks that are not registered. Registration of a trademark gives constructive notice that the registrant has certain rights and priority to use the trademark how they please. Registration also helps inform the general public that there is already a trademark on this certain item and there may not be another trademark applied.

If Stouffer were to bring claims against Rowling, it is likely that they would be pursuant to Section 43(a) of the Lanham Act, which states; "Any person who on or in connection with any goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, which-- (A) is likely to cause confusion... as to the origin... of his or her goods... shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act." Therefore, Stouffer could make claims of false representation and unfair competition.

Considering Stouffer's possible claim of false representation and unfair competition, he would likely allege that Rowling unlawfully used character names and likenesses in interstate commerce to sell and promote goods and services which falsely represent or create the impression in the consumer's mind that the products are associated, connected, or affiliated. However, these allegations do not involve any false representations per se, but rather the misappropriation by Rowling of using "muggles" as the name of a population of non-magical characters, which is substantially similar to the use of "muggles" in Stouffer's work. Essentially, he would claim that Rowling laid false claim to his intellectual property and because "muggles" became associated with Stouffer, consumers were likely to be confused by the use of the name, resulting in damages to him.

Rowling created her books in good faith. She did not realize that the word "muggles" had previously been used by another author. She did not intentionally try to steal this word from Stouffer or use the word to confuse customers. There is no way the customers could have mistaken Stouffer's book for Rowling's if Stouffer's was never made available to the public. Since Stouffer did not trademark "muggles," there was no constructive notice that the word "muggles" had previously been used.

The question at hand is of the term "muggles" and who really has trademark rights to the term. Provided Stouffer filed this suit within the five year