Never trust a hippie?

Woodstock_posterFor 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.”

Radio Woodstock®
Radio Woodstock®

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.

Woodstock_bird
Woodstock

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.

Station IDMcCarthy 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.”

 

Ron Coleman

I write this blog.

13 Replies to “Never trust a hippie?

  1. I don’t understand how you reach this conclusion: “The only thing WIOF can’t say, ultimately, is “Radio Woodstock,” “Woodstock Radio,” or, I’d agree, “Woodstock 104? … That is likely to cause confusion even with the RADIO WOODSTOCK and WOODSTOCK RADIO trademarks” — how does WOODSTOCK 104 infringe on RADIO WOODSTOCK/WOODSTOCK RADIO?

    The reason geographically descriptive terms aren’t afforded broad/inherent protection is because companies like WIOF (those in the geographically named place) need to use the term in its descriptive sense. RADIO WOODSTOCK/WOODSTOCK RADIO are weak marks (even if registered) and the station does not market itself as having any connection to the Woodstock Music Festival or any other secondary meaning. It’s just a radio station in Woodstock, NY. So is WOODSTOCK 104 … and they should be able to identify themselves as such.

    Including 104 in their mark obviates any likelihood of consumer confusion since it directs consumers to their station.

    1. I thought about that, Roberto, and I came to a different conclusion. My reasoning is that I don’t see how the risk of confusion will be ameliorated by the clarification as to the frequency given that the consumer is unlikely to be aware that there are multiple radio stations that use “Woodstock” as a brand, and — as I say in the post — I would consider WOODSTOCK 104 to be such a use. I don’t believe the junior user is entitled to any branding use of “Woodstock” in its name at all, notwithstanding the weakness of the senior user’s mark. It is only entitled to fair use, i.e., a description of where it’s located and even what it’s about, as often as it wants to say so.

      Better question: Could WIOF build a campaign around the (descriptive) phrase, “WIOF Radio 104 — your alternative for Woodstock radio”? That, in fact, I think it could do — though I’m not sure why it would, other than to prove the point, etc.

  2. Under your reasoning the senior user of a geographically descriptive term in a given field can prevent all junior uses (“as a brand”) of that geographic term just because they share a common descriptive word … and even where different elements are part of the junior user’s mark.

    That’s granting way too broad a scope of protection to a senior user of a geographic identifier. So, hypothetically, we can have the New York Yankees … but not the New York Mets? Or, The New York Times, New York Post and New York Daily News can not all co-exist without confusion?

    1. Well, if you look at my second paragraph, I sort of took back some of the “as a brand” language, since a slogan can be a trademark or a brand-builder. Let me put it to you, Roberto: How do you reconcile the existence of these trademarks at all with degree of fair use you are championing?

      Or is that your point — that the registration was improvidently granted? That was, in fact, my first reaction. But when I did the research, that didn’t appear to be correct.

      Your examples from the sports teams make no sense to me. The dominant trademark element of NEW YORK YANKEES and NEW YORK METS are YANKEES and METS respectively. Indeed, just as an example, in US Reg. No. 1073346 for the mark NEW YORK YANKEES, “New York” is disclaimed (although in an interesting way — the applicant purports to use the opportunity to reserve its common law rights!).

      In contrast, in RADIO WOODSTOCK, the disclaimed portion is “radio”!

  3. A geographic term can carry a mark to registration when combined with generic wording. But that does not mean all later uses of the geographic term are confusingly similar.

    The newspaper examples I offered are better than the sports teams. And I’m sure research would reveal a number of analogous co-existing uses in cities across the country (for radio stations and broadcasting services).

    The point is — both RADIO WOODSTOCK and WOODSTOCK 104 can co-exist because a senior user of a geographically descriptive term doesn’t necessarily own exclusive rights to it. There’s a reason why they have to “earn their place at the trademark table.” And once at the table they can’t have their cake and eat it too. I see no likelihood of confusion for these particular uses (geographically descriptive) in this particular market (“public access” radio broadcast). WDST is, in my opinion, clearly overreaching.

  4. Roberto is not “maybe right”; he is absolutely right! WDST is overreaching and over-reacting.
    BTW the radio station in Woodstock, Vermont is identified simply as “Woodstock-106.9”, why? Because that is what and where it is! “Woodstock 104” fairly and accurately and fully describes the Woodstock station.

  5. Roberto is absolutely right;you are absolutely wrong. Zero likelihood of confusion in Woodstock NY by anyone who can count to 120.
    Radio station in Woodstock, Vermont is “Woodstock 106.9.” The station in Woodstock NY is just as properly identified as “Woodstock 104”.

    1. At 7:54 am you said the topic was “interesting” but 13 hours later you were certain I was “absolutely wrong”!

      Are you a judge?

  6. Interesting topic as are most “confusion” issues. I agree with Roberto. His analysis is spot on.

  7. Ron

    Check your timeline; my “interesting” observation was made on Feb. 28 AFTER I opined on Feb 27 that you were”absolutely wrong” . Needless to say, Roberto and I strenuously disagree with your original analysis ( although you appear to have backed off from your original conclusion) and in these circumstances and after further thought I took the opportunity to characterize the station identification topic as “interesting” to soften the gratuitous sting of my “absolutely wrong” opinion lest you take umbrage. As I understand your position on the issue, you now appear to agree that Roberto maybe was right.

    For the record I was in fact a local judge years ago but have retired from that office. I, like Roberto, am a trademark lawyer and understand the fluidity of the strength of trademarks and the myriad factors which come into play and must be weighed when making an analysis of likelihood of confusion.

    Peace. love, and 3 days of music!

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