Bona-Hatem’s “Sunday Baroque” show is a four-hour syndicated Sunday morning program which is broadcast to over 90 stations and heard in over 30 states to an audience of 2.7 million people (according to the suit)
In addition, Bona-Hatem was able to procure her a trademark registration for the mark SUNDAY BAROQUE for “Entertainment in the nature of on-going radio programs in the field of Baroque music” from the U.S. Patent and Trademark Office (“PTO”). Of course, it was only after she first disclaimed the descriptive word “Baroque” from her mark. Moreover, anticipating an obvious descriptiveness refusal by the PTO, the application was initially filed with a claim of Section 2(f) acquired distinctiveness on the basis of Bona-Hatem’s claimed exclusive and continuous use in commerce of the mark for at least the five years prior to making the claim of acquired distinctiveness. The PTO did not raise any questions about her Section 2(f) claim or request any additional evidence to prove her acquired distinctiveness claim.
The lawsuit alleges that Sirius-XM is broadcasting a similar baroque show on Sunday – and using a name that is identical to her mark (although one wonders how you might describe a baroque radio show broadcast on Sundays without using some semblance of her mark).
While one wonders why Sirius-XM didn’t just change the name of its show in response to correspondence from Bona-Hatem’s attorney. After all, she cannot really prevent anyone from using the term Baroque in connection with playing Baroque music – and do you really have to use the word Sunday as part of the program title?
Of course, from Sirius-XM’s perspective, while Bona-Hatem may have a trademark registration for SUNDAY BAROQUE, can she really prevent other radio programs from using the words SUNDAY and BAROQUE in their descriptive sense when broadcasting a baroque music radio show on Sunday (i.e., would “Sunday Morning Baroque” or “Baroque on Sunday” be considered by Bona-Hatem confusingly similar?).
So who do you think is in the right here? Is Bona-Hatem’s trademark so ridiculously descriptive that she should not be allowed to claim any exclusive rights to the term SUNDAY BAROQUE in connection with a baroque radio show broadcast on Sunday? Or is Sirius-XM being ridiculous in not taking the simple step of simply renaming the show (is calling the show by the boringly descriptive “Sunday Baroque” so important that its willing to go to court over it)?