CBS is ultimate SURVIVOR in trademark battle

In Sullivan v CBS Corporation, the US Court of Appeals for the Seventh Circuit has ruled that CBS Corporation's use of a SURVIVOR mark on merchandise related to its hit reality television series Survivor did not infringe the rights of Frank Sullivan III - a founding member of the 80s rock band Survivor - in his identical mark.

Sullivan filed suit in 2001 in the US District Court for the Northern District of Illinois, claiming that CBS's use of the SURVIVOR mark on various merchandise constituted a violation of the Lanham Act and state law, in particular, the Trademark Registration and Protection Act, Uniform Deceptive Trade Practices Act and Consumer Fraud and Deceptive Business Practices Act.

To prevail in his claims against CBS, Sullivan had to show that a likelihood of confusion existed between his SURVIVOR trademark and CBS's mark. Sullivan asserted that CBS's use of SURVIVOR on music CDs and other products would have a bearing on the millions of dollars worth of CDs and merchandise he sells each year.

In 2002 the district court found that although Sullivan's SURVIVOR mark had acquired secondary meaning, he had failed to demonstrate any likelihood of confusion with CBS's use of SURVIVOR in conjunction with its reality television series. On appeal, the Seventh Circuit agreed with the lower court, finding that Sullivan had not submitted enough evidence on likelihood of confusion to survive summary judgment.

Although Sullivan has strong rights against other bands or musicians that attempt to use a SURVIVOR mark, the appellate court found that "he would have only weak or nonexistent protection outside that particular niche". It also noted that CBS had taken "substantial steps to make the association between its CDs and its television show readily apparent from the face of the CD". CBS included the words "The Official Soundtrack of the Hit CBS TV Series" on its packaging, along with the series logo, which always shows the mark SURVIVOR surrounded by the words 'Outplay', 'Outlast' and 'Outwit'. The court agreed with CBS that "despite the similarity of the dominant portion of the marks [the word SURVIVOR], there can be no confusion" between the two parties' marks.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC

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