Now, some of you might be wondering, "How can John Elway, a person, sue a band, that calls itself Elway?" Well, the answer lies in Trademark law. In the United States, the trademark is roughly a word, logo or package design or a combination of them, used by a manufacturer or merchant to identify goods or services and distinguish them from others. For instance, a name, logo, sound, or possibly even an aroma could be used as a trademark, so long as they identify a product's source; when you see the Pepsi logo, for example, you know that the soda came from Pepsi company, so the Pepsi logo is eligible to be a trademark. When you read the title of an album by GWAR, the name GWAR is eligible to be a trademark because it lets you know what band recorded the album.

There isn't even actually a requirement that a trademark be registered with the government to be enforceable. But when a trademark is registered with the government, it grants benefits in enforcing the trademark and also creates a presumption that a trademark is enforceable. When a party has a valid trademark, it is entitled to stop others from using its mark in numerous situations. The most common situation is when the mark of a subsequent party is confusing with a mark that has previously been in use. In that case, the party to first use the mark can prevent the subsequent party from using that mark. When determining if a mark is confusing, most Federal courts use a variation of an eight factor test called the "Polaroid test". The court will look at the following: 1) the Strength of the mark; 2) the similarity of the two marks; 3) the relatedness of the goods; 4) the marketing channels of the two goods; 5) evidence of actual confusion between the two; 6) intent in adopting the mark; 7) the quality of goods and services; 8) the sophistication of users. After the court considers these elements individually, it will consider them cumulatively and decide whether or not the secondary user of the mark is producing a good or service that is confusing as per the law to the primary user.

Here, famous football player John Elway is suing the band Elway for using the Elway mark. John Elway has registered the mark in a number of forms and logos, and the band Elway has not. (source). Although I have not seen the pleading papers, John Elway is likely suing the band Elway for using a mark that is likely to cause confusion among consumers. (Note: Mr. Elway has not yet in fact sued the band or even sent them a cease and desist letter. The document the band Elway recieved is assumingly little more than a warning doused in legalese. --ed.) Looking at the eight factors, it seems that the band Elway might have a good argument that there is no confusion, mostly because there is likely little evidence of actual confusion, the goods produced by John Elway and the band Elway are entirely different, and the marketing channels of the two parties probably do not overlap. Still, John Elway might have pretty damning evidence with regards to the band Elway's intention for picking the name and may be able to argue that the name "Elway" is a very strong mark.

However, victory in court probably won't be so much of a threat to the band Elway as money will. Trademark litigation not only involves lawyers fees, but almost always involves experts. In a trademark case, hiring an expert often starts out with a $15,000 retainer and can rapidly increase. Often, larger parties that hold a mark will threaten smaller parties with a similar mark in order to protect their own mark. Knowing that smaller parties can not afford to litigate, the larger party will force the smaller party to change its mark and therefore strengthen its own for future litigation, even if it would have lost in court. If the band Elway chooses to fight the famed footballer, they'll likely have quite the battle ahead of them. If not, then they'll likely agree with John Elway that if they change their name, he'll drop his pending suit.

Lately there has been a trend of bands naming themselves after real people: P.S. Eliot; Betty White; Charles Bronson; Dale Earnhardt Jr. Jr; Hank IV; Joy Orbison. If the band Elway loses in court, it could open a floodgate of similar litigation. Therefore, all you up and coming bands, be sure to name yourselves wisely. Maybe a silly pun in your name isn't worth the risk. As for me, as we speak, I'm applying for the trademark "John Gentile (The Band)".

John Gentile is a staff writer for Punknews, regularly ups the punx, and is also an Intellectual Property Attorney by day.