News reached us in Nigeria a few days ago that someone (a man named Nicholas Opara) had applied for and received approval from the USPTO to register the word “Nollywood” as a trademark in the United States. At first it didn’t seem to me like something anyone should worry about but the Nollywood people at the NBA’s Section on Business Law Conference were clearly disturbed. There is a sense that anyone using the expression “Nollywood” in the context of our entertainment industry will owe Mr Opara money. This is incorrect, for the reasons given below.
What does this mean? Well, trademarks are registered in connection to goods and services. So you can’t just walk up to the trademarks office and ask to register “TEXTHELAW” in abstract. You would have to tell them what goods or services will be branded with the trademark. In the refresher course link above, you will find that there is a standardised international classification of goods and services, available in most countries. In Mr Opara’s case, he registered NOLLYWOOD in connection with “Advertising; business management; business administration; office functions” (class 35) and “Telecommunications” (class 38).
What is the effect of the Class 35 & Class 38 registrations? It means that you can’t set up businesses that provide the services listed under these classes (i.e. advertising, business management, business administration, telecommunications) and use the word Nollywood in the business name or trademark of your company. Mr. Opara can set upNollywood Telecoms or Nollywood Business Managers and it would be fine. It does NOTmean that anyone operating in our Nollywood needs his permission to use the word or that the industry as a whole is held to ransom by Mr. Opara.
Could he have registered the trademark in Class 41? The services listed under class 41 are “Education; providing of training; entertainment; sporting and cultural activities”. This is the class that would have given Nigerian practitioners real concern, as it would have meant that trading in the US as movie industry practitioners under the name Nollywood, would have infringed Mr. Opara’s registration. However, given the popularity and famousness of the term “Nollywood” worldwide and the industry it represents, it is unlikely that the USPTO would have agreed to a registration in this class. And if they did, it would be fairly easy to instruct a US attorney to challenge such a registration as the chances of getting it revoked are very high.
Should an actor or the Guild of Actors/Directors register Nollywood as a trademark in Nigeria? No. First of all, a trademark cannot be descriptive of the goods or services it brands. So, for example, you cannot register “PURE WATER” as a trademark to brand drinking water. In the same vein, “Nollywood”, which has come to mean the movie service industry segment of the Nigerian entertainment sector cannot be registered as a trademark for entertainment services, in my opinion. Secondly, the whole point of a trademark is to distinguish your goods and services from those of others. So even if the Nigerian Trademarks Registry somehow approved the trademark application, it would be a trademark of very little value, since the entire industry already refers to itself as Nollywood.
Did Nicholas Opara miscalculate or does he have something up his sleeve? My mentors in the legal profession taught us not to comment on speculation so they would probably be disappointed by this paragraph. However, the cynic in me thinks he probably tried class 41 initially and was refused, so he settled for the next best classes. Nonetheless, 35 and 38 registrations will not affect 41 services, especially if it’s clear that you didn’t invent the word. On the other hand, it is quite plausible that he wants to deploy Nigeria-centric services in the US and I guess this isn’t a bad thing. It wouldn’t be out of place, for example, to have Hollywood Drycleaners or Hollywood Barbers in Nigeria. If his plan is something more along those lines, then all the very best to him.