Never trust a hippie?
For years I’ve been kvetching here about the phenomenon of municipal overreach on intellectual property claims, whether it’s catchphrases with no particular geographic association; transit line symbols that do convey meaning but when licensed don’t convey meaningful claims of endorsement or affiliation; skyline features that belong to no one; or municipal seals that the Lanham Act simply says ain’t trademarks.
So when I saw this headline — “Can a town’s name be a trademark?” — I got ready to roll up my sleeves again. But… no. This is even more interesting:
Town Board members do not expect to use not-for-profit radio station WIOF as background filler between public access television programs until a trademark dispute is settled that has commercial station WDST claiming foul over use of the town’s name.
Supervisor Jeremy Wilber during a telephone interview Wednesday said the use of “Woodstock 104” by WIOF is being protested by WDST as an infringement on the “Radio Woodstock” and “Woodstock Radio” identifiers. . . .
WDST General Manager Richard Fusco on Friday said station officials have no objections to use of WIOF for the public access channel but believe use of “Woodstock 104” will confuse listeners.
“We’re are not looking in any way, shape or form not have her do it or in any way interfere with what (WIOF Chief Executive Officer Randi Steele) is doing, or in any way want to squelch her project,” he said. “We just saying do whatever you want to do, just don’t infringe on our trademark.”
Information provided by WDST shows the station trademarked [sic] the phrases “Radio Woodstock” in 1994 and “Woodstock Radio” in 2002.
Fusco said station officials are hopeful that a court case can be avoided and said there are many options for WIOF to identify itself with Woodstock without use of the town’s name in a tag line or slogan.
“She is perfectly able to say ‘this is hippie radio’ or ‘tie dyed radio’ or what ever name she wants to call it ‘from Woodstock, New York,’” he said. “The geographic location is what she is legally able to use. But associating it as the name of the entity…is an infringement on the trademark.”
Steele contends WDST management is being predatory in efforts to have the phrase discontinued.
“When we submitted the paperwork to the state that was in order to call our radio division ‘Woodstock 104,’” she said.
“You cannot trademark the name of the town,” Steele said. “That’s restraint of trade.”
What we have here is a veritable trademark law festival! Unlike the Woodstock one, however, this is neither Aquarian, three days long (enough of that!), nor muddy. But for sure, it’s at least as much fun, and no penicillin will be required afterwards.
First off, Radio Woodstock really is in Woodstock, New York. So its registered trademark, RADIO WOODSTOCK, is what trademark law calls, quite logically, “geographically descriptive” (or, sometimes, a “geographical indicator” or “GI”). Descriptive terms, of course, have to earn their place at the trademark table. In particular:
Since geographically descriptive terms are not regarded as inherently distinctive, the law requires that they must acquire consumer association or “secondary meaning” for legal protection. That is, the senior user must prove that customers have come to use a geographically descriptive word in a new and secondary sense of indicating only one source and quality of goods or services. Thus, the doctrine of secondary meaning requires that a geographically descriptive term, like any other descriptive symbol, be associated with a particular source in buyers’ minds before any trademark significance may be attached to the term.
2 McCarthy on Trademarks and Unfair Competition § 14:9 (4th ed.) (footnotes omitted). But the trademark here is not WOODSTOCK. It’s RADIO WOODSTOCK. That’s a composite mark. “If a geographical term is combined with other elements to form a composite mark, the resulting combination may not have any descriptive connotations. The total commercial impression created by a composite mark may be merely arbitrary or suggestive even though some of its separate parts may be geographically descriptive.” Id. at § 14:11.
RADIO WOODSTOCK does, of course, have descriptive connotations. But they are not limited to a description of geographic location, though in this case those connotations are, in fact, accurate. They are also connotative, in the cultural — and, especially, the musical — context — of a particular sensibility.
Maybe not all that particular, though. On the one hand, there’s Woodstock Woodstock — the music festival which actually took place in Bethel, New York; the “generation”; the website. These refer fairly narrowly to one particular kind of Woodstock. On the other hand, Radio Woodstock’s on-air mix is decidedly and, understandably, quite a bit broader, even if its target market presumably has a positive association with the “Woodstock” concept.
All that would seem to bode well for Radio Woodstock’s secondary meaning assertions. It’s not a radio station in Woodstock, except that it happens to be; it could just as well be in Bethel, New York, or Bethel Pennsylvania, or the Hotel Pennsylvania. It’s not about the Woodstock Festival, the Woodstock generation, or the acts that performed at that famous emblem of generational whatever the hell it was. It’s crafted a distinctive identity in the radio market, it appears, that, while allusive to the Woodstockiness of things, probably holds up, all things being equal.
And when might they not be equal? Well, the thing about descriptive trademarks is that, while they are trademarks, they aren’t the strongest trademarks. They’re still descriptive. Even obtaining trademark rights, registration and all, doesn’t allow you to stop other people from accurately describing the world in ways that may sound very much like your trademark — i.e., from making fair use of your trademark.
But this is a tricky one.
McCarthy discusses quite a few cases involving the use of location names on products where it’s pretty obvious that the junior user is just trying to use the fair use defense as a rationalization to divert the goodwill of a famous trademark holder its way. He focuses rightly on the seminal case of American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85, 53 N.E. 141 (1899). What reason would there be to put the word “Waltham” on your watch case other than to cause a LIKELIHOOD OF CONFUSION with the WALTHAM trademark, then famous for watches? (It’s not exactly like “Geneve.”)
Radio broadcasting services are different, aren’t they, though? Ask any old radio dog: What do you have to do every hour, on the hour, when you’re on the air? If you don’t like dogs, the answer is in CFR Title 47:
§ 73.1201 Station identification.
(a) When regularly required. Broadcast station identification announcements shall be made:
(1) At the beginning and ending of each time of operation, and
(2) Hourly, as close to the hour as feasible, at a natural break in program offerings. . . .
(b) Content. (1) Official station identification shall consist of the station’s call letters immediately followed by the community or communities specified in its license as the station’s location; . . .
(2) A station may include in its official station identification the name of any additional community or communities, but the community to which the station is licensed must be named first. . . .
(ii) In the case of aural broadcast stations, such announcements, in addition to the information required by paragraph (b)(1) of this section, shall include the frequency on which each station is operating.
In other words, as the Radio Woodstock spokesperson acknowledged, quite properly, in the quote above, “She is perfectly able to say . . . what ever name she wants to call it ‘from Woodstock, New York . . . The geographic location is what she is legally able to use. But associating it as the name of the entity…is an infringement on the trademark.”
So: “This is WIOF, Woodstock, on your radio at 104.1.” That should be ok here. The location is, after all, legally mandated — unlike in Waltham and similar cases. Now, there’s no real need to use the word “radio,” but if the WIOF folks want to, they can, because it’s descriptive; indeed, the registrations owned by Radio Woodstock all, thanks to the crack work of our PTO, disclaim any right over the word “radio”!
The only thing WIOF can’t say, ultimately, is “Radio Woodstock,” “Woodstock Radio,” or, I’d agree, “Woodstock 104” — because here, “104” is understood to mean “radio station found at 104 on the dial.” That is likely to cause confusion even with the RADIO WOODSTOCK and WOODSTOCK RADIO trademarks, it seems, for while these might be narrow trademarks, well, they’re trademarks all the same, and must stand for something.
Even if they don’t stand for “three days of peace and music.”