A common misconception many people have about trademark law is that trademarks are only valid if they are registered with the US Patent and Trademark Office (USPTO). I had the opportunity recently to debunk this fallacy at a family holiday dinner. I’ll explain how.

Mythbusting at Christmas Dinner

[Every family experiences awkward table talk over holiday dinner. But when you’re in law school, apparently the table talk involves debunking Intellectual Property (IP) myths!]

My interest in trademark law came up at the dinner table this Christmas. Then my cousin chimed in with a story about a popular Discovery Channel show, MythBusters, and a recent trademark dispute they had with a viewer. My cousin told us that “MythBusters let its trademark registration lapse,” that a viewer noticed this lapse in registration, and then the viewer registered the trademark for himself. I was immediately skeptical of all of this. As you continue reading, you will see that my cousin did not have the story right at all.

My cousin sat there laughing – he thought it was hilarious! According to him, because this viewer registered the mark, the real MythBusters could no longer use the MythBusters trademark because someone else registered it before they could. As he saw it, a widely successful television show was being duped by an average viewer, even outwitting Warner Bros.’s lawyers.

I must have had the most unamused look on my face. I’m sure my family was thinking “Sheesh, AJ went off to law school and now she can’t even take a joke without trying to do legal analysis.”

But I knew trademark validity doesn’t require registration. I immediately tried computing how this could have transpired. So, I did what any other law nerd does after a conversation like that – I made a passionate USPTO search and decided to write a legal analysis on it to combat this false narrative. I’ll get to what I found in a minute. First, here’s some basic information about trademark law.

A Crash Course on Trademark Validity

Let’s start with some background on what a trademark is and what it means to register one. A trademark is any word, symbol, or device that identifies and distinguishes goods or services from others. For a trademark to be valid it must simply be used on goods or services in interstate commerce, and it must be distinctive (identifies a source) with regard to a class of specific goods or services.

A registered trademark provides the owner of the mark with a prima facie presumption of trademark validity (presumed valid for litigation purposes). However, registering a mark is never required for a trademark to be valid. Registering the mark just makes it easier for the trademark owner to prove a case of trademark infringement against someone if their mark has been used without the owner’s permission. This is helpful for the trademark owner (plaintiff) because in order to bring a trademark infringement case, the plaintiff must first establish that their mark is in fact a valid mark. Since having a registered mark creates that presumption of validity, registration makes the litigation process easier for the plaintiff if they bring an infringement claim. But, again, registration is never required.

Trademarks can last indefinitely, so long as they are consistently used in commerce. Registered trademarks must be renewed every ten years. Unregistered trademarks just need to be continuously in use by the trademark owner. If the owner of a trademark stops using the mark and does not renew the registration, though, it will become an abandoned mark. Abandoned marks can then be cancelled, meaning that others can claim ownership of the mark or register it.

Additionally, multiple parties can register the same word, symbol, etc. if the marks are used on different goods or services such that there is no confusion as to source. For example, the word mark “Dove” can be used on both chocolates and body care products because these are two very distinct markets. In this example, consumers would not likely see a bar of Dove soap and think that the Dove chocolate company made the soap, so both companies are able to claim that word mark for their specific good.

The Dispute and What Actually Happened

After I did some digging, I learned that Allen Pan, a YouTube creator and MythBusters fan, discovered that one of MythBusters’ trademarks owned by The Discovery Channel, the MythBusters logo (image below), had been abandoned.

Source: United States Patent and Trademark Office

How did this logo get abandoned? This likely happened after The Science Channel, The Discovery Channel’s sister company, took over production and airing of MythBusters in 2017. At some point, The Discovery Channel had registered multiple trademarks for MythBusters. But after checking the USPTO Trademark Search, it appears that The Science Channel has never filed any trademark registrations for the show. The Science Channel has always used the MythBusters word and logo on entertainment goods and services, though, as they continuously air the MythBusters show. And, as mentioned earlier, registration was not required for the mark to be valid. So, The Science Channel’s failure to register the trademark after The Discovery Channel stopped using it would not have caused a lapse in trademark ownership.

Some of the trademarks The Discovery Channel registered include the MythBusters word mark for use on entertainment services, posters and calendars, and the MythBusters logo for use on a book series. The class of goods that this dispute revolved around, though, was The Discovery Channel’s trademark for the MythBusters logo used on apparel goods, like hats and T-shirts.

The Discovery Channel had a trademark registered for use of the MythBusters logo on apparel, but they abandoned the mark in 2020 after failing to renew the trademark’s registration. After learning this, Pan filed his own trademark registration for the MythBusters word mark on apparel goods like hats and T-shirts. However, even though The Discovery Channel abandoned this trademark, The Science Channel was still actively using the MythBusters word mark and logo on apparel goods. So, when Pan started selling T-shirts that contained the “MythBusters” word mark, he was infringing the MythBusters trademark even though The Science Channel hadn’t registered it with the USPTO.

When The Science Channel’s parent company, Warner Bros., discovered that Pan was selling these T-shirts, they sent Pan a cease-and-desist letter. This letter was basically a notice that Pan was infringing their trademark rights. If Pan did not stop selling the T-shirts that contained any “MythBusters” trademark, Warner Bros. would pursue a claim of trademark infringement against him. This resulted in Pan abandoning the trademark application that he filed.

A lawyer likely advised Pan that his use of the mark on apparel goods was likely to be found as trademark infringement. This is because if Warner Bros. ended up bringing a trademark infringement lawsuit against Pan, Warner Bros. would have likely won because the court would have almost certainly found that he was infringing their trademark. A court determines that there is trademark infringement when a defendant uses someone else’s valid trademark on similar goods and services such that it could create confusion as to source or sponsorship. This “likelihood of confusion” is evaluated with a balancing test of factors. These factors include the strength of the plaintiff’s mark, the plaintiff’s likelihood to expand into the market that the infringing goods/services were used on, similarity of marks, consumer sophistication, use of similar marketing channels, the defendant’s intent to capitalize on the plaintiff’s good will, and proof of actual confusion by some consumers. A brief analysis of some of these factors shows that Pan would definitely be in trouble if he continued to sell these T-shirts.

An evaluation of the “MythBusters” word mark for likelihood of confusion shows that it is definitely a strong mark that a large amount of the population easily recognizes. Pan’s infringing mark was also identical to The Science Channel’s mark because it was the exact same spelling of MythBusters. Lastly, Pan was also making a profit from these T-shirts, which shows that he was likely intending to capitalize on the plaintiff’s good will. Pan made these T-shirts because it was likely that MythBusters fans would buy them as show merchandise. Because the show had such a large fan base, Pan was likely attempting to tap into this good will to make a profit. Overall, these factors would lean toward a likelihood of consumer confusion. Pan likely realized this, so he abandoned his application for the mark.

Also, my cousin’s misconception that MythBusters couldn’t be MythBusters anymore was entirely wrong. Pan’s trademark application was only registered for apparel. It is true that The Discovery Channel once had a registered trademark for apparel items, but abandoned it after The Science Channel acquisition. However The Discovery Channel never lapsed in its renewal of the trademark it had for entertainment goods and services and it remains active. Therefore, my cousin’s claim that MythBusters couldn’t continue to air episodes, or basically be MythBusters anymore, was totally wrong. Since Pan’s trademark application was for a specific class of goods and services, just apparel items, it would have never restricted the real MythBusters from using the mark on entertainment services even if Pan had a valid trademark – so long as there was no confusion between the two. Thus, MythBusters was never in jeopardy of losing their ability to air the show under the “MythBusters” name.

Although Pan thought he was being clever by discovering a legal loophole, all he ended up with after the dispute was a lesson about trademark validity and at least a few hundred dollars less than he originally had, wasted on application fees.

 

 

AJ Gordon
Associate Blogger
Loyola University Chicago School of Law, J.D. 2026