Eminem Files Petition to Cancel ‘Swim Shady’ Trademark
Eminem has taken legal action to protect his iconic ‘SLIM SHADY’ brand.
The artist, whose real name is Marshall Mathers, has taken action to cancel a recently registered trademark for ‘SWIM SHADY,’ owned by an Australian company.
The ‘SWIM SHADY’ registration was just granted on September 25th by the USPTO. Enimem filed his Petition to Cancel with the USPTO four days later, on September 29th.
Per the company’s website, the ‘SWIM SHADY’ brand is primarily a brand of portable beach umbrellas. That said, the company also offers athletic bags for swim gear, apparel, and swimwear.
Examples of Swim Shady Products from Swim Shady’s Website
Eminem’s cancellation action filing argues that he has used the ‘SLIM SHADY’ mark since 1996 and that the ‘SWIM SHADY’ trademark is confusingly similar, differing by just one letter.
Eminem’s ‘SLIM SHADY’ Trademark Registrations
| wdt_ID | wdt_created_by | wdt_created_at | wdt_last_edited_by | wdt_last_edited_at | Trademark | Registration # |
|---|---|---|---|---|---|---|
| 1 | SLIM SHADY | 2641856 | ||||
| 2 | SLIM SHADY | 2626305 | ||||
| 3 | SLIM SHADY | 2667895 | ||||
| 4 | SHADY | 2469453 |
Eminem argues that ‘SWIM SHADY’ points “uniquely and unmistakably” to his famous brand.
While the U.S. Patent and Trademark Office initially approved the ‘SWIM SHADY’ application, federal law allows third parties to challenge registrations for up to five years after they are granted.
Why is Eminem attempting to Cancel the ‘SWIM SHADY’ trademark?
When people see headlines like this, the first question is often:
Why did Eminem allow this application to register in the first place? Couldn’t he have opposed it during the application stage?
The reality is, even with strong monitoring systems, applications sometimes slip through. Or it may be that Eminem’s attorneys didn’t get their client’s approval to act within the narrow 30-day opposition window.
Fortunately for Eminem, US law allows trademarks to be challenged even after they are registered.
The main reason that Eminem would likely pursue this case is that a registration such as ‘SWIM SHADY’ could narrow his rights in the ‘SLIM SHADY’ trademark. Courts will often find that if a trademark co-exists in a “crowded field” of similar marks, the rights in that trademark are diminished or narrowed.
How strong is Eminem’s case?
This case is not a slam dunk for Eminem.
Yes, ‘SWIM SHADY’ is just one letter off from ‘SLIM SHADY.’ But the products—umbrellas and beach shade gear—don’t naturally tie back to Eminem in the way that apparel does. The strongest argument Eminem has is that the ‘SWIM SHADY’-branded clothing might be an area where consumers might assume some type of endorsement or collaboration between the parties. As for the beach umbrellas? That’s a tougher sell.
Ultimately, this type of case doesn’t have to resolve all in favor of one party. For example, Eminem might win the case as it relates to clothing products, but Swim Shady might be able to keep a more narrow registration for beach umbrellas.
At this point, Swim Shady will have 60 days to file an Answer. If the case doesn’t settle, it will proceed to discovery and ultimately to a trial.
So, sit back under a Swim Shady umbrella, turn on some Slim Shady classics, and watch this case unfold.
Josh Gerben, Esq.
Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.
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