The image of Marilyn Monroe as a registered trademark.

On November 9, 2016, the Marilyn Monroe Estate filed a lawsuit against a New York-based clothing company for unlawfully using the “Marilyn Monroe” trademark, which the Estate owns, by featuring the image of the famous actress.

The Marilyn Monroe Estate has registered with the PTO (the United States Patent and Trademark Office) its exclusive ownership of Marilyn’s image, name, identity, and likeness, as well as the right to license these rights to third parties. 
The Marilyn Monroe Estate is, therefore, the owner and licensee of the Marilyn Monroe trademark, which it has continuously used in the marketplace for over thirty years. This circumstance renders the trademark uncontested, providing it with greater protection. 

For these reasons, the Monroe Estate has sought a finding of violations under the Lanham Act, 15 U.S.C. § 1051 et seq., the New York Statutes, and other applicable common law provisions, and has sought compensation for the resulting damages, including trademark infringement and dilution, as well as unfair competition.

It matters little, therefore, that the defendant company does not actually use Marilyn’s name in commerce: the image of the most famous diva of all time, when used as a distinctive sign or trademark, falls within the scope of the “Monroe Rights” owned by the plaintiff.
More specifically, as is also evident from a previous judicial ruling*, it is necessary to distinguish between the infringement of trademark exploitation rights and the infringement of image exploitation rights. In fact, for the former to be established, it requires that the consumer be led to believe that the use of the trademark has been authorized by the owner. 
And precisely on this point, the Monroe Estate specifies that confusion among consumers and retailers did occur: many reportedly contacted the company believing that the defendant’s products had been approved, authorized, or sponsored by the company that owns the trademark.

In this specific case, therefore, while it might be extremely difficult—or even impossible—to prove trademark infringement since the trademark has not been used, 15 U.S.C. § 1125(a) grants the plaintiff broad authority to file a valid claim.
In fact, U.S. federal trademark law is aimed at protecting consumers. If there is actual confusion among the consumer public, there should also be a likelihood of confusion, which is the scenario covered by the provisions of 15 U.S.C. § 1125(a).
The existence of actual confusion in the context of a registered trademark should ensure the application of the aforementioned provision, guaranteeing that the Monroe Estate’s claim will be upheld.

*A.V.E.L.A., Inc. v. The Estate of Marilyn Monroe