7:17am PT by Eriq Gardner
Oprah Winfrey Wins Tough Trademark Fight Over "Own Your Power"
Oprah Winfrey has vindicated her legal might, prevailing in a topsy-turvy case that alleged that she had violated a motivational entrepreneur's hold over "Own Your Power" through use of the phrase on the cover of O, The Oprah Magazine, at a magazine-related event, on social media accounts and on her TV show.
Simone Kelly-Brown filed the lawsuit in 2011, proclaiming a registered trademark for 15 years. The following year, the plaintiff's lawsuit was tossed by a federal judge upon a ruling that Winfrey had a fair use right to descriptively label her magazine. A year later, the 2nd Circuit Court of Appeals revived the dispute with doubts that an Oprah Magazine power women issue really exhorted readers to become more powerful in a descriptive sense.
That meant the lawsuit was sent back down for more discovery and further proceedings before U.S. District Judge Paul Crotty.
This time, the focus isn't on Winfrey's use of "Own Your Power" but rather an examination of what, if anything, is protected by Kelly-Brown. Winfrey challenged the presumption of the mark's validity and the plaintiff's exclusive right to use the mark in commerce.
Judge Crotty says the "Own Your Power" phrase "lacks the requisite distinctiveness to be entitled to protection," and while it is "descriptive" because it refers to the motivational entrepreneur's services, the plaintiff has failed to establish "secondary meaning" with no consumer studies, media coverage or much else that would source the phrase to Kelly-Brown's business. The judge adds that even if the mark was protected, the plaintiff failed to demonstrate a likelihood of confusion.
The ruling (read here) is evidence that the validity of a trademark can be pulled apart even past registration.
Earlier in the week, the U.S. Court of Appeals for the Federal Circuit gave more proof of this when it affirmed cancelation of a "Playdom" service mark.
In that dispute, David Couture registered "Playdom" only to be later challenged successfully by Walt Disney Co., which had acquired the Playdom, Inc. game company so as to expand its online social network gaming division. According to a precedential opinion by the appeals court on Monday, Courture didn't sufficiently "use" the mark in commerce even after posting a website advertising his readiness to provide services.