Clear Channel Claims "Unity Day" Trademark and Stops Philadelphia Group's Permit
Clear Channel's WDAS 105.3 FM radio station contacted the City of Philadelphia and claims Trademark rights to "Unity Day" after a local Philadelphia group: Unity Day on the Parkway, Incorporated - files for a Special Event permit to host: "Unity Day on the Parkway" for August 23, 2009.
The "Unity Day on the Parkway" event was Titled after the name of the Corporation. However, City officials refuse to budge on the organizations permit application.
Legal background on Trademarks:
The Lanham Act provides national protection of trademarks in order for owners of marks to secure the goodwill of their businesses and in order to protect the ability of consumers to distinguish among competing producers. See S. Rep. No. 79-1333, at 3, 5 (1946).
To this end, the Lanham Act defines the term "trademark" to include "any word, name, symbol, or device, or any combination thereof - (1) used by a person, . . . to identify and distinguish his or her goods, . . . and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. 1127 (1994).
The Supreme Court has likewise reiterated that "t is the source-distinguishing ability of a mark - not its ontological status as color, shape, fragrance, word, or sign - that permits it to serve these basic purposes [of identifying and distinguishing the goods to indicate source]." See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 (1995).
By definition, something that is generic cannot serve as a trademark because it cannot function as an indication of source. See In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
In Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985), the Supreme Court explained that "[a] generic term is one that refers to the genus of which the particular product is a species. . . . Generic terms are not registerable, and a registered mark may be canceled at any time on the grounds that it has become generic." See id. at 194.
The Court has emphasized several times throughout its opinion that the registration of an incontestable mark that becomes generic may be cancelled at any time. See id. at 195, 197, 201, 202.
Review of the Lanham Act and relevant case law is that the term "generic name" as used in 15 U.S.C. 1064(3), must be read expansively to encompass anything that has the potential but fails to serve as an indicator of source, such as names, words, symbols, devices, or trade dress.
Any narrower interpretation of "generic name" would allow incontestable trademarks other than names that become generic to retain incontestable status despite their inability to serve as source designators.
This would directly contravene the purpose of the Lanham Act. Cf. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773 (1992) (finding no persuasive reason to apply different analysis to trademarks and trade dress under 43 of the Lanham Act because the protection of both serves the same statutory purpose).
Clear Channel's lawyer: Mathew Jennings Esq. of Cox Smith, San Antonio, Texas - stated the following in an e-mail sent to Unity Day on the Parkway, Inc. --- ...etc... It is Clear Channel’s policy to enforce its intellectual property rights vigorously. In that regard, this letter serves as formal notice that your use of the UNITY DAY Mark, in any manner, is wholly unauthorized, is likely to cause confusion, and constitutes trademark infringement, cybersquatting, and unfair competition in violation of federal and state law. While Clear Channel does not wish to engage in a protracted legal dispute, we simply cannot allow continued infringement of the UNITY DAY Mark or statements implying an affiliation with Clear Channel’s past festivals. ...etc... (copy of lawyer's e-mail available on the website or HERE: http://unitydayontheparkway.org/PDF-DOCS/E-MAIL - TRADEMARK REF NO 22187.3735.pdf)
A represenative from Unity Day on the Parkway, Inc. - Mr. Kyle Davis, Project Manager, states that once clear channel cancelled the event for 2009, it was our responsibility to protect a (30) year heritage that been adopted by the Communities of Philadelphia as their own. A lawsuit is forthcoming against Clear Channel, and it is unacceptable for Big Business to bully the Little People, when clearly, the Law is on Our side.
We are asking Philadelphia to Support "Unity Day on the Parkway" for an August 23, 2009 event, by contacting Local Officials, City Council, Fairmount Park Commission and anyone else that the public can think of to support "Unity Day on the Parkway" by Telephone calls, Faxes and emails.
Mr. Davis also notes that it appears that Clear Channel has a relationship with Yahoo for streaming and downloading live concert events, and questions why the Yahoo search engine returns nothing regarding Philadelphia and Unity Day on the Parkway for 2009, nor does the domain name: www.unitydayontheparkway.org show up in any Yahoo search engine result pages. "Makes you Wonder !!!" ...
For more information goto: http://www.UnityDayontheParkway.org
PRESS RELEASE:
http://www.prlog.org/10288218-clear-channel-claims-unity-day-trademark-and-stops-philadelphia-groups-permit-for-2009-event.html
Clear Channel's WDAS 105.3 FM radio station contacted the City of Philadelphia and claims Trademark rights to "Unity Day" after a local Philadelphia group: Unity Day on the Parkway, Incorporated - files for a Special Event permit to host: "Unity Day on the Parkway" for August 23, 2009.
The "Unity Day on the Parkway" event was Titled after the name of the Corporation. However, City officials refuse to budge on the organizations permit application.
Legal background on Trademarks:
The Lanham Act provides national protection of trademarks in order for owners of marks to secure the goodwill of their businesses and in order to protect the ability of consumers to distinguish among competing producers. See S. Rep. No. 79-1333, at 3, 5 (1946).
To this end, the Lanham Act defines the term "trademark" to include "any word, name, symbol, or device, or any combination thereof - (1) used by a person, . . . to identify and distinguish his or her goods, . . . and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. 1127 (1994).
The Supreme Court has likewise reiterated that "t is the source-distinguishing ability of a mark - not its ontological status as color, shape, fragrance, word, or sign - that permits it to serve these basic purposes [of identifying and distinguishing the goods to indicate source]." See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 (1995).
By definition, something that is generic cannot serve as a trademark because it cannot function as an indication of source. See In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
In Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985), the Supreme Court explained that "[a] generic term is one that refers to the genus of which the particular product is a species. . . . Generic terms are not registerable, and a registered mark may be canceled at any time on the grounds that it has become generic." See id. at 194.
The Court has emphasized several times throughout its opinion that the registration of an incontestable mark that becomes generic may be cancelled at any time. See id. at 195, 197, 201, 202.
Review of the Lanham Act and relevant case law is that the term "generic name" as used in 15 U.S.C. 1064(3), must be read expansively to encompass anything that has the potential but fails to serve as an indicator of source, such as names, words, symbols, devices, or trade dress.
Any narrower interpretation of "generic name" would allow incontestable trademarks other than names that become generic to retain incontestable status despite their inability to serve as source designators.
This would directly contravene the purpose of the Lanham Act. Cf. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773 (1992) (finding no persuasive reason to apply different analysis to trademarks and trade dress under 43 of the Lanham Act because the protection of both serves the same statutory purpose).
Clear Channel's lawyer: Mathew Jennings Esq. of Cox Smith, San Antonio, Texas - stated the following in an e-mail sent to Unity Day on the Parkway, Inc. --- ...etc... It is Clear Channel’s policy to enforce its intellectual property rights vigorously. In that regard, this letter serves as formal notice that your use of the UNITY DAY Mark, in any manner, is wholly unauthorized, is likely to cause confusion, and constitutes trademark infringement, cybersquatting, and unfair competition in violation of federal and state law. While Clear Channel does not wish to engage in a protracted legal dispute, we simply cannot allow continued infringement of the UNITY DAY Mark or statements implying an affiliation with Clear Channel’s past festivals. ...etc... (copy of lawyer's e-mail available on the website or HERE: http://unitydayontheparkway.org/PDF-DOCS/E-MAIL - TRADEMARK REF NO 22187.3735.pdf)
A represenative from Unity Day on the Parkway, Inc. - Mr. Kyle Davis, Project Manager, states that once clear channel cancelled the event for 2009, it was our responsibility to protect a (30) year heritage that been adopted by the Communities of Philadelphia as their own. A lawsuit is forthcoming against Clear Channel, and it is unacceptable for Big Business to bully the Little People, when clearly, the Law is on Our side.
We are asking Philadelphia to Support "Unity Day on the Parkway" for an August 23, 2009 event, by contacting Local Officials, City Council, Fairmount Park Commission and anyone else that the public can think of to support "Unity Day on the Parkway" by Telephone calls, Faxes and emails.
Mr. Davis also notes that it appears that Clear Channel has a relationship with Yahoo for streaming and downloading live concert events, and questions why the Yahoo search engine returns nothing regarding Philadelphia and Unity Day on the Parkway for 2009, nor does the domain name: www.unitydayontheparkway.org show up in any Yahoo search engine result pages. "Makes you Wonder !!!" ...
For more information goto: http://www.UnityDayontheParkway.org
PRESS RELEASE:
http://www.prlog.org/10288218-clear-channel-claims-unity-day-trademark-and-stops-philadelphia-groups-permit-for-2009-event.html
