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 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" since 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.