Navigating the USPTO as a celebrity or a large brand can be humbling because it doesn’t matter how famous you are or how much money you have if you try to apply for a trademark and someone else already has a registered trademark that is the same or too similar.

Although the law in the United States technically is that the first person who uses a trademark first has superior rights, if you aren’t also the first to file with the USPTO, it becomes much more difficult to obtain a trademark – even if you’re a celeb!

Now, Taylor Swift may say she doens’t love the drama, it loves her - but I’m not even going to pretend I don’t love the drama because well, I do! Not only is it interesting, but there’s also so much we can learn from every celebrity or big brand trademark trainwreck. And if there’s one thing I love even more than the drama, it’s having examples to help you learn what NOT to do in business and being able to share them in a fun enough way that you’ll actually WANT to stop and learn about the boring legal stuff!

If you missed Part 1, we covered these 5 celebrity trademark cases:

Yankees Player Aaron Judge and MLB Players Association vs Random Fan
Meghan Markle and her podcast application
Eminem vs. The Real Housewives
Kim Kardashian’s “SKKN by Kim” brand
Hailey Bieber’s “RHODE” skincare line

Since covering those high-profile cases was such a blast, let’s do 5 more! Make sure to stay for the takeaways in each so you don’t follow in their footsteps (at least from a trademark perspective).

1. Skechers sues Steve Madden

Skechers (which surprisingly doesn’t have a “T” in it) sued Steve Madden for adding an “S” to the side of their shoes, despite pretty much everyone associating the “S” to be connected to Skechers. We’ve all seen Skechers sneakers with the “S” on teh side, right?! They also have multiple trademark registrations for various types of “S” logos. Skechers sued for trademark infringement, alleging that consumers will be confused because Steve Madden is using an “S” just like them, using it on the same products as them, and marketing it to the same type of consumers.

Take a look for yourself:

The Lesson:

Anticipate the consequences - aka hire a lawyer that will does this for you (it’s our job). I can’t imagine Steve Madden’s lawyer OK’ing this, but a legal battle doesn’t mean as much for a big brand. It’s not about what you think is too similar to another brand, it’s about what a consumer may think. So unless you have the kind of money these brands do, don’t take these types of unnecessary risks.

2. Chipotle sues Sweetgreen

If you haven’t heard of Sweetgreen, they typically sell salads. So when they launched a new dish, NOT a salad, and called it “Chipotle Chicken Burrito Bowl” Chipotle was fired up. They felt that using their brand name as the first word in Sweetgreen’s item name, the capitalization of the first letter, as opposed from calling it a “Chicken bowl with chipotle”, and used similar font and coloring, it was a clear attempt to capitalize on their well established brand.

Chipotle also said they tried to keep it out of the public eye by calling Sweetgreen and then sending a cease and desist letter… but when they were ghosted by the salad co they went public - with a lawsuit.

Sweetgreen’s stock dropped right away and they must have realized they messed with the wrong brand because within 24 hours we had an update. They backed down and changed the name to “Chicken + Chipotle Pepper Bowl.”

The Lessons:

Don’t ignore a cease & desist letter! Bring it to a lawyer and figure out your options because you truly never know what someone else is going to do. Ignoring it may lead them to take you out of the legal arena and straight into the court of public opinion, which can get really messy.
Trademark your brand so you have a leg to stand on and can avoid getting hit with cease & desist letters.
Avoid using other people’s trademarked brands when you’re naming something.

3. Burger King (the original) vs. Burger King (the chain you see today)

This is one of my favorite stories. It’s such a great lesson that I wrote an entire blog post on it. The quick rundown is that Betty and Gene Hoots had an ice cream shop called “Frigid Queen” in Mattoon, IL. They decided to expand to selling burgers and fries in a building next door. When deciding on a name, Betty said a “Queen needs a King” and the name “Burger King” was born.

They decided to secure the name with a state trademark, believing that would give them the rights to use the name “Burger King” for food all throughout the state of Illinois. However, a Florida business opened up a Burger King and quickly grew it into a massive chain, spreading into Illinois. When the Hoots family was sick of customers being confused between the other Burger King restaurants and theirs, they decided to sue.

Unfortunately, the Florida business had registered a federal trademark so the court sided with them, stating their federal trademark trumped Betty and Gene’s state trademark. Because the Hoots family had been using it first, they still had what is called “common law” rights to the name “Burger King.” But the problem with relying on these unregistered rights is that they only extend to a small geographical area. Here, the court decided they could use their name only within a 20 mile radius. The Florida chain was free to operate anywhere in the U.S. outside of that 20 mile radius.

The Lesson:

If you want to continue using your brand name, you always want to be the first one to file because you don’t want to get landlocked to a small geographical area like the original Burger King. They were left with no ability to expand, having to deal with the consumer confusion, diminished brand recognition, and an income and growth cap. Don’t end up like the OG BK.

4. Dunder Mifflin (The Office)

Calling all fans of The Office! Dunder Mifflin has found itself in the middle of a trademark battle. A media group decided to file a trademark for Dunder Mifflin for apparel like hoodies, sweatshirts, and hats and actually reached registration for it. The problem is that the creator of the show (NBCUniversal) should actually be the one to own the trademark for Dunder Mifflin, since they were using it first and have the rights to it, even though the other company ended up filing first. NBC could have avoided this whole issue by filing first, but they didnt.

NBC filed a lawsuit against the media company, alleging that they built their business by registering trademarks for things that already existed and belonged to other companies in an attempt to profit off of it and then try to sell the registration back to the actual owner. These types of people/companies are often referred to as trademark squatters because they aren’t the ones that own the brand but just happened to file first.

NBC ended up settling. For them, this wasn’t really a huge deal because they have a ton of money, but for the average small business owner, it could financially ruin their business.

The Lessons:

Always be the first one to file because even though the law is the first to use has the most rights to it, the first person to file is automatically in a better position. In order to beat out the first filer, you’ll need to either oppose their trademark during the registration process. attempt to cancel it after they register, or file a lawsuit for infringement - all of which typically average at least $100,000.

Business owners often think it won’t happen to them, but it does. I’ve even seen this happen to small businesses on TikTok - a troll followed their small business, filed for the trademark before them and attempted to sell it back to the business. The trademark squatter offered to sell it back to them for $17,000. So the business had only a few options: pay the $17k, file a lawsuit or attempt to oppose their trademark ($100k average), or entirely rebrand.

This is also why it is always at least a little bit risky to launch your brand without having a trademark filed. You never know where a squatter may be lurking. Oh, and don’t build your brand off of someone else’s already existing brand (like this company trying to capitalize off of Dunder Mifflin), I know it’s appealing, but just create your own brand.

5. Breaking Bad vs… Baking Bad!

In case you missed it, Breaking Bad was a crime drama television show that ran for 5 seasons, and in my opinion, is one of the few shows that actually got better and better rather than going downhill. A high school chemistry teacher diagnosed with lung cancer pivots to selling meth with a former student… if you haven’t watched, I highly recommend you start.

Now let’s get into the legal battle. Sony owns the trademark for Breaking Bad. Another company had the idea to start a television show and call it “Baking Bad”, and filed a trademark for it. Once Sony caught wind of this, they opposed their application, alleging Baking vs Breaking only differs by 2 letters making it sound similar, and therefore, consumers would be confused between both being able to exist. Sony also felt “Baking Bad” was trying to capitalize off of the notoriety that “Breaking Bad” had built.

“Baking Bad” owners never answered the opposition that Sony filed (through the Trademark Trial and Appeal Board), which means “Breaking Bad” wins on default, and the “Baking Bad” trademark application will not proceed.

The Lesson:

Once again, please avoid building your brand off of another brand. You may think that your business isn’t that big and it’s not going to catch the attention of the large brand it’s built off of, but you shouldn’t be building your business off a foundation that can crack at any moment. Sure, your brand may be much smaller than theirs, but these are big companies. A lot of them employ lawyers (and use software) to literally comb the internet looking for trademark and copyright infringers. Entrepreneurs tend to take more risks than the average person, but don’t risk your business by trying to capitalize off of someone else’s brand, just build your own.

Even larger brands run into trademark issues

Whether you’re a billion dollar company, have one of the most popular TV shows of all time, or have built a globally recognizable brand, you’re not immune to legal issues and you surely aren’t given any special treatment from the USPTO. Work with a lawyer who knows her trademark stuff to make sure you’ve got the best shot at protecting your business and brand. 😘

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