Normally the IPKat is happy to leave recently-departed guest Kats to their own devices after they have had a six-month stint on this weblog, to give them a chance to recover, but one of the most recent guest Kats, who provided us with this post only last Sunday on whether merely offering a service constitutes the use of a trade mark under the Lanham Act, is back in action once again. The guest in question is Marie-Andrée Weiss and the reason she's back so soon is that we asked her if she could update us on the Oprah Winfrey "Own Your Power" trade mark infringement, on which she wrote this Katpost last year. This is what has happened since:
On 5 March 2015, Judge Paul Crotty from the Southern District of New York (SDNY) granted Oprah Winfrey’s motion to dismiss the trade mark infringement suit filed against her over her use of the “Own Your Power” slogan. Judge Crotty further held that the plaintiffs’ registered trade mark was descriptive and could not therefore serve as a mark. This case is Kelly-Brown v Winfrey, No. 11 cv 7875 (S.D.N.Y. Mar. 5. 2015).
Oprah Winfrey used the “Own Your Power” phrase on the cover of the October 2010 issue of her O magazine, which had power as its theme. The phrase was also used on banners at a promotional event for the O power issue. The defendants also used the phrase online and on Oprah Winfrey’s television show.
In July 2011, Kelly-Brown and her company instituted legal proceedings against Oprah Winfrey and Hearst, the magazine publisher, claiming trade mark infringement, false designation of origin, reverse confusion and counterfeiting. The SDNY dismissed this complaint in its entirety in 2012, finding the use of “Own Your Power” to be fair use. On appeal, the Second Circuit partially affirmed the dismissal, except the trade mark infringement, false designation of origin, and reverse confusion claims, finding that the defendants had not adequately established a fair use defence.
On remand, the defendants again moved for summary judgment, which was granted by Judge Crotty in its entirety last week. He found that the phrase "Own Your Power” was not protected and that, even if it were protected, “there [was] not a shred of evidence establishing a likelihood of consumer confusion.” Further, even if the plaintiffs would have established likelihood of confusion, the defendants' use would have been fair.
“Own Your Power”: not protected because it is descriptive
Judge Crotty was convinced by the defendants’ arguments that the plaintiffs’ mark was not protected because it lacked distinctiveness.
The Second Circuit explained, in the oft-quoted Abercrombie & Fitch Co. v Hunting World Inc. 1976 case, here, that there are four classes of mark which “roughly reflects their eligibility to trademark status and the degree of protection accorded,… (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.” For Judge Crotty, the plaintiffs’ mark did not belong in any of these four classes, being merely descriptive, because the plaintiffs provided “motivational services help[ing] clients own their power,” and that “Own Your Power” was a phrase used by Kelly-Brown herself to describe her services.
A descriptive mark may nevertheless be registered if it has acquired secondary meaning, that is, if it has become synonymous with goods or services in the mind of the public, and thus effectively identifies these goods or services.
The Second Circuit provided, in Time Inc. v Petersen Publ’g Co., here, six factors which courts use to establish secondary meaning: (1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark and (6) length and exclusivity of the mark’s use. In our case, the plaintiffs’ advertising expenditures had been rather quite meagre: $2,957 from 2009 to 2013. The plaintiffs did not present sufficient evidence of media coverage of “Own Your Power” in connection with Kelly-Brown’s business either. Also, the plaintiffs’ sales figures were relatively low, rising from $966 in 2009 to $30,007 in 2013, and the company had even failed for several years to make a profit.
In contrast, the phrase “Own Your Power” had often been used by other businesses and by Oprah Winfrey herself about 20 years ago in a college commencement speech, where she urged grads to own their power. Judge Crotty thus concluded that the plaintiffs failed to prove that the OWN YOUR POWER mark had acquired secondary meaning. This being so, the mark could not be protected as a trade mark. He nevertheless addressed the issue of likelihood of consumer confusion and of fair use.
Np likelihood of confusion shown
Courts within the Second Circuit use the eight Polaroid factors, as enumerated in Polaroid Corp. v Polarad Elecs. Corp. (1961) to establish likelihood of confusion. These factors are (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the proximity of the products, (4) the likelihood that the prior owner will bridge the gap, (5) actual confusion, (6) the defendant’s reciprocal good faith in adopting its own mark, (7) the quality of the defendant’s product, and (8) the sophistication of the buyers. Judge Crotty found that the plaintiffs had not satisfied any of these factors.
Strength of the mark: The plaintiffs’ services had a low level of commercial success, and Judge Crotty also noted that Kelly-Brown used her mark to describe her own services which “renders the phrase inherently weak.” [This should be kept in mind by trade mark practitioners with clients seeking to register descriptive marks, who should be advised never to use their own mark in a descriptive way.]
Similarities between the two marks: There were no similarities between the registered mark and the defendants’ use of the mark. In the Second Circuit, courts “look to the overall impression created by the logos and the context in which they are found and consider the totality of the factors” which could cause confusion, Gruner + Jahr USA Publ’g v Meredith Corp (2nd Circ. 2013). In our case, the plaintiffs’ mark, as stated in the registration, is “[t] he color(s) light blue is/are claimed as a feature of the mark. The mark consists of light blue scripted letters which create the words “Own Your Power." While the defendants used the “O” trade mark as the first letter of the phrase “Own Your Power,” such use did not create consumer confusion as it was not similar to Kelly-Brown’s use of her mark.
Proximity of the services: The parties' respective services were found to be fundamentally different. Added Judge Crotty, even if the parties had offered similar services, the defendants’ worldwide market position and audience appeal, with a television show boasting about 16 million viewers, further decreased any likelihood of confusion.
Bridging the gap: There was no evidence that the plaintiffs would ever “bridge the gap” with the defendants, meaning that there was no likelihood that the plaintiffs would in the reasonably near future sell the defendants’ services. As noted by Judge Crotty,“[t]hough they may aspire to do so, Plaintiffs present no evidence indicating a likelihood of creating a global media presence capable of attracting an audience of millions” [Ouch].
Actual confusion: While the plaintiffs presented evidence of anecdotal statements from four business associates, Judge Crotty did not find them convincing as they “appear[ed] to be in response to a “call-me-and-tell-me-you-are-confused” request.” In contrast, the defendants presented three surveys demonstrating no consumer confusion.
Good faith: Finally, Judge Crotty found that the defendants had not used the plaintiffs’ registered mark in bad faith, as this mark was a special form mark limited to the stylized use of “Own Your Power” in “light blue scripted font.” The defendants’ use did not resemble this particular mark.
The remaining Polaroid factors were found not to support a likelihood of confusion.
Fair use defence applies
The Lanham Act, 15 U.S.C. § 1115(b)(4) provides a fair use defence in a trade mark infringement case if the use is descriptive of and used fairly and in good faith only to describe the defendants goods or services. This defence can be used in unfair competition claims too. To make this defence succeed, a defendant must prove that (1) the use was made other than as a mark, (2) in a descriptive way, and (3) in good faith.
Use other than a mark: The plaintiffs unsuccessfully argued that the defendants’ use of “Own Your Power” amounted to creating a sub-brand. However, the defendants only used the phrase in events related to promoting the October 2010 O magazine issue, and stopped using the phrase shortly thereafter. It had not been used to attract public attention, and the defendants systematically used their own registered trade marks alongside “Own Your Power".
Use in a descriptive sense: Judge Crotty noted that “Own Your Power” is a “commonly used phrase", that the plaintiffs had failed to prove that “their use of the phrase [was] unique or uncommon,” and that “Defendants use[d] the phrase to describe their overall message of self-empowerment.”
Own your Power hereUse in good faith: The defendants did not use the plaintiffs ‘mark in bad faith, as they had not intended to generate confusion or to trade on the good will of the plaintiffs’ mark.
For all these reasons, Judge Crotty granted the defendants ‘motion for summary judgment in its entirety. The plaintiffs are likely to appeal, as the stakes are high, since Judge Crotty found their trade mark not to be protected.
Cat Power here