Showing posts with label Section 2(f). Show all posts
Showing posts with label Section 2(f). Show all posts

Wednesday, December 23, 2009

Las Vegas Review Journal Sues Companies Over “The Best of Las Vegas”



(...and the award for Best Trademark Law Blog in Las Vegas in 2009 goes to...)

Stephens Media LLC (“Stephens”), the owner of the Las Vegas newspaper The Las Vegas Review Journal, has sued three companies for trademark infringement over the use of the mark “The Best of Las Vegas.” Two of the lawsuits were filed earlier this week and one filed earlier this month. See Stephens Media LLC v. Gault Millau, Inc., Case No. 09-cv-02403 (D. Nev. December 21, 2009) (complaint here); Stephens Media LLC v. US Commerce Association et al, Case No. 09-cv-02405 (D. Nev. December 21, 2009) (complaint here); and Stephens Media LLC v. CitiHealth, L.L.C., Case No. 09-cv-02285 (D. Nev. December 2, 2009) (complaint here).

An article on the lawsuits, written by the Las Vegas Sun (the print version of which is owned by a separate company, but distributed with the Review Journal), can be found here.

Stephens has several federal trademark registrations for both the design mark “The Best of Las Vegas” (pictured above) and the word mark “Best of Las Vegas” including:

  • The design mark THE BEST OF LAS VEGAS for “section of a newspaper featuring consumer preferences and recommendations regarding people, places, goods, services, restaurants, entertainment, arts, sports and recreation in the Las Vegas area”;
  • The design mark THE BEST OF LAS VEGAS for “Newspaper articles, periodicals and pamphlets featuring general information about people, places, goods, services, restaurants, entertainment, arts, sports and recreation; paper award certificates”;
  • The word mark BEST OF LAS VEGAS for “Newspaper articles, periodicals and pamphlets featuring general information about people, places, goods, services, restaurants, entertainment, arts, sports and recreation; paper award certificates”;
  • The word mark BEST OF LAS VEGAS for “promoting the sale of goods and services of others by conducting and disseminating business surveys featuring consumer preferences and recommendations regarding people, places, goods, services, restaurants, entertainment, arts, sports and recreation in the Las Vegas area”; and
  • The word mark BEST OF LAS VEGAS for “providing a web site featuring business and consumer preferences and recommendations regarding people, places, goods, services, restaurants, entertainment, arts, sports and recreation in the Las Vegas area.

For those of you wondering how Stephens could possibly obtain trademark registrations for such a descriptive mark, the answer lies in Section 2(f) of the Trademark Act which allows a trademark owner to register a descriptive mark on the basis of acquired distinctiveness. All of the above marks are registered on the Principal Register based on a Section 2(f) claim of acquired distinctiveness (in-part for the design marks do have a distinctive design) – and all registrations have disclaimers of the word “Las Vegas.”

According to the complaint against Gault Millau, its travel website gayot.com has a section named “The Best of Las Vegas Top Restaurants Hotels Travel Guide” (click here to see what I could find) that Stephens finds infringing.

As for the complaint against US Commerce Association, the company is allegedly selling “award” plaques ($80 each) or award trophies ($180 each) to small businesses by sending e-mails stating that they have won a “Best of Las Vegas Award” which are bestowed upon such businesses by US Commerce Association. [Comment: kind of like those scam Who’s Who’s directories that will honor you by listing you in their "Who's Who" book – with the payment of a fee which gets you a copy of the book listing the names of thousands of others suckers as well as a pretty piece of paper]. Stephens feels that the company's actions harms the goodwill associatd with its “Best of Las Vegas” marks.

Finally, the lawsuit against CitiHealth relates to the company’s publication of a magazine in December 2008 called “Healthy Living Las Vegas” that included the phrase on the cover “Best of Las Vegas” (the cover picture appeared online as well at http://www.citihealth.com/). Las Vegas Sun reporter Steve Green spoke with the publisher of the Healthy Living, who stated that the company was not aware of Stephens’ trademarks for “Best of Las Vegas” at the time the magazine was published and that after the company received notice from Stephens, the company took action to remove the magazines from circulation and removed it from the website. [So why the lawsuit after all this time? That’s the real question isn’t it?]

Friday, July 31, 2009

Woman Sues Sirius-XM over SUNDAY BAROQUE

The Connecticut Post reports (link here) on the trademark infringement lawsuit filed by an Ohio woman named Suzanne Bona-Hatem against satellite radio company Sirius-XM over the use of the mark SUNDAY BAROQUE for a radio music show featuring guess what kind of music which can be heard on guess what day of the week?

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)?

Wednesday, March 19, 2008

The TTABlog finally gets the ®ecognition it deserves.

Congratulations to John Welch of The TTABlog®, who, after an unsuccessful appeal to the institutution to which he has devoted his blogging life, finally got his ® for THE TTABLOG based on acquired distinctiveness under Section 2(f).

I've updated the name on my list of blog links -- along with a long overdue ® for Ron Coleman's Likelihood of Confusion® (sorry for the oversight Ron).

Can registrations for Seattle Trademark Lawyer and Vegas Trademark Attorney be far behind? Prof. Marc Randazza's post on The Legal Satyricon (link here) gives me hope.