May I have your attention, please?
Shade and shady are glorious words, with rich history and evolving, overlapping and metaphorical meanings.
Shade is derived from the Middle English schaid (the dark image cast by someone or something or comparative obscurity or gloom caused by the blockage of light) and the late Old English scead (sheltered from glare or heat). Sometime in the late 19th century, shady took on the connotation of disreputable (as in a shady character). Eminem harnessed this sense of the word when, in the mid 1990s, he came up with “Slim Shady” as the name for (as Wikipedia describes it), his “sadistic, violent, alter ego.” He subsequently obtained trademark registrations for SLIM SHADY, SHADY, and SHADY LIMITED in several categories, including for entertainment services and a range of merchandise.
The phrase throwing shade – meaning to disrespect or insult someone (either verbally or non-verbally), usually with subtlety and wit – came out of the New York City drag ballroom scene in the 1980s, fertile grounds for fashion, dance and (most definitely) clever word play. One of the first recorded uses of “shade” to mean an insult was in the 1990 documentary Paris is Burning, which included this unforgettable scene in which the late Dorian Corey schooled us in what it means to read and to shade another drag queen:
Two decades later, throwing shade and shady entered the mainstream after RuPaul paid homage to Paris is Burning during the second season of RuPaul’s Drag Race (see this clip) by “opening up the library” and inviting the show’s contestants to “read” each other. As Merriam-Webster explains, “what ensued was a competition of epic takedowns, and though the contestants were reading, most of the write-ups afterwards called it throwing shade.” To get a sense of just how popular this usage of shade has become, Google “Nancy Pelosi Shade Trump” and just marvel at the results.
Fans of The Real Housewives of Potomac know that cast members Robyn Dixon and Gizelle Bryant (especially Bryant) are accomplished shade throwers. Capitalizing on this reputation, in 2021 Bryant and Dixon launched Reasonably Shady, a podcast in which they dish about their lives as Bravolebrities and whatever else strikes their fancy. The podcast is popular and was nominated last year for an NAACP image award. Earlier this month, Dixon and Bryant filed applications to register the trademark REASONABLY SHADY for entertainment services (“namely, providing podcasts in the field of dating, relationships, marriage, entrepreneurs, motherhood, style, glam, and current events”), make-up, candles (they are coming for you, Karen Huger), mugs, sweatshirts and other merch.
Enter Eminem, who says “We’re gonna have a problem here.” According to the rapper, Dixon and Bryant are not the real shady. They are (wait for it) just imitating. And so, he opposed the applications on two grounds. First, Eminem argues that there is a likelihood of confusion between his marks and REASONABLY SHADY. Indeed, Eminem contends that confusion is “unavoidable” because the “dominant portion” of REASONABLY SHADY “is identical to [Eminem’s] registered and prior used mark SHADY” and because “REASONABLY SHADY so resembles … SLIM SHADY, SHADY and the mark SHADY LIMITED in terms of appearance, sound and commercial impression as to be likely, when applied to Applicant’s goods, to cause confusion and mistake and to deceive.” Second, Eminem argues that his trademarks have achieved fame and “the mark REASONABLY SHADY … inevitably will call to mind SLIM SHADY, SHADY and SHADY LIMITED and would therefore dilute … SLIM SHADY, SHADY and SHADY LIMITED by impairing the distinctive quality of [those marks] to uniquely identify Marshall Mather’s goods and services.”
Dixon and Bryant have not responded yet to the opposition. Assuming they don’t reach peace with Eminem, we can anticipate the following arguments:
- There is no likelihood of confusion.Because “shady” is a common word and because there are a number of third party applications and registrations for trademarks containing the term “shady,” Dixon and Bryant likely will argue that SLIM SHADY and SHADY are conceptually weak marks and entitled to a narrow scope of protection. Indeed, even a quick search on Spotify and Apple Music (and in the Trademark Office) shows that there are numerous podcasts that use SHADE, SHADY and variants in their titles. This, combined with the fact that REASONABLY SHADY is different in sight, sound, and – most importantly – commercial impression, renders confusion unlikely.
- Counterpoint: one of the third party podcasts is hosted by Eminem’s own daughter Hailie (hers is called “Just a Little Shady”). If her father consented to use, rights in JUST A LITTLE SHADY inure to his benefit and give him a slightly (ever so slightly) better argument that consumers could think the REASONABLY SHADY products are similarly licensed.
- Eminem’s rights in SHADY are limited. Though Eminem may contend that the confusion claim based on his rights in SHADY is stronger because REASONABLY SHADY incorporates the whole of the mark, this argument has limits. Eminem’s SHADY registration covers apparel only, and he does not claim common law rights in SHADY for any other goods or services. While this argument may be persuasive to block Dixon and Bryant’s application for clothing, it is less viable when it comes to podcasts.
- There is no dilution. Despite Eminem’s popularity, and the popularity of his albums and songs that incorporate various versions of SHADY in their titles and lyrics, Eminem will have to prove that SHADY and SLIM SHADY are so well-known as to be household names – the hurdle a mark needs to clear in order to be deemed famous enough to be eligible for dilution under the Federal Trademark Dilution Act. To do this, Eminem will need to submit evidence of extensive advertising and sales, at a minimum. Better if he introduces a well-designed survey supporting his fame allegation.
We will have to wait to see Dixon and Bryant’s response and how the case develops. While one would hope that parties will ultimately reach an agreement to peacefully coexist, no party here seems like the type who will bow out without a fight: Success is my only motherf***in' option, failure's not!
Mathers v. Dixon, Opp. No. 91283402 (T.T.A.B. Feb 14, 2023).