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Playing What We Want - Service Mark

T

TJMPRO

Just a quick a question... I've heard that both "JACK-FM" and "Playing What We Want" are service marks of Sparknet Communications.

What if a station decides to use "We Play What We Want" as a monkier, would that be considered infringement even though it's not word for word what Sparknet has serviced marked?
 
> Just a quick a question... I've heard that both "JACK-FM"
> and "Playing What We Want" are service marks of Sparknet
> Communications.
>
> What if a station decides to use "We Play What We Want" as a
> monkier, would that be considered infringement even though
> it's not word for word what Sparknet has serviced marked?
>

Generally, trademarks cover the exact mark and those that are "confusingly similar." So, the answer is probably yes. You can't say for sure because the court has to determine whether the marks are similar and whether consumers would be confused.
 
Would there be legal problems if a "Jack"-type format not using the name "Jack FM" used as their slogan "We Play What We Like"??
 
> Would there be legal problems if a "Jack"-type format not
> using the name "Jack FM" used as their slogan "We Play What
> We Like"??
>

Depends on the scope of the registration of the trademark. If the description of the goods/services in the trademark registration is broad, then the answer would be yes. It's something you would want a trademark attorney to look at.
 
> > Would there be legal problems if a "Jack"-type format not
> > using the name "Jack FM" used as their slogan "We Play
> What
> > We Like"??
> >
>
> Depends on the scope of the registration of the trademark.
> If the description of the goods/services in the trademark
> registration is broad, then the answer would be yes. It's
> something you would want a trademark attorney to look at.
>

What about "Playing Whatever We Feel Like"? I know Ben FM in Philly uses that slogan.<P ID="signature">______________
Check my website www.freewebs.com/radiostuffandnews
</P>
 
> Would there be legal problems if a "Jack"-type format not
> using the name "Jack FM" used as their slogan "We Play What
> We Like"??
>


That one would be up to the courts. Remember a few years ago when CC positioned many/most of their CHRs as "Kiss", even in markets where there was existing (non-CC) Kiss? IIRC, CC won that one. I wonder if the WPWWL phrase would be considered too broad.
 
> > Would there be legal problems if a "Jack"-type format not
> > using the name "Jack FM" used as their slogan "We Play
> What
> > We Like"??
> >
>
>
> That one would be up to the courts. Remember a few years
> ago when CC positioned many/most of their CHRs as "Kiss",
> even in markets where there was existing (non-CC) Kiss?
> IIRC, CC won that one. I wonder if the WPWWL phrase would
> be considered too broad.
>


The only ones CCU won were in markets where the competitor adopted "Kiss" after KIIS in LA did. There are a number of stations that have been Kiss prior to the LA station and CCU either did not challenge them or lost the challenge.
 
> > > Would there be legal problems if a "Jack"-type format
> not
> > > using the name "Jack FM" used as their slogan "We Play
> > What
> > > We Like"??
> > >
> >
> > Depends on the scope of the registration of the trademark.
>
> > If the description of the goods/services in the trademark
> > registration is broad, then the answer would be yes. It's
> > something you would want a trademark attorney to look at.
> >
>
> What about "Playing Whatever We Feel Like"? I know Ben FM in
> Philly uses that slogan.
>

That, again, would be for the courts to decide. You never know until you are actually in front of a judge (or judge and jury).
 
> The only ones CCU won were in markets where the competitor
> adopted "Kiss" after KIIS in LA did. There are a number of
> stations that have been Kiss prior to the LA station and CCU
> either did not challenge them or lost the challenge.

I had thought that there a date in the 90's where CC or Jacor had copywrighted the name "Kiss", and that all Kiss stations before that were in the clear; all after had to change names if CC attacked.

Stations like KISS in San Antonio, and most notably WKYS in Washington were in the clear. However, two stations that I can think of; a country station in the midwest and owned by Journal; along with WKIE/WKIF/WDEK in Chicagoland, were forced to succumb to Clear Channel.

(I could never figure out why CC never went after WMEK Auburn-Portland, ME, the station flipped to "Kiss" while CC was in the process of dealing out lawsuits.)
 
> > The only ones CCU won were in markets where the competitor
>
> > adopted "Kiss" after KIIS in LA did. There are a number of
>
> > stations that have been Kiss prior to the LA station and
> CCU
> > either did not challenge them or lost the challenge.
>
> I had thought that there a date in the 90's where CC or
> Jacor had copywrighted the name "Kiss", and that all Kiss
> stations before that were in the clear; all after had to
> change names if CC attacked.
>
> Stations like KISS in San Antonio, and most notably WKYS in
> Washington were in the clear. However, two stations that I
> can think of; a country station in the midwest and owned by
> Journal; along with WKIE/WKIF/WDEK in Chicagoland, were
> forced to succumb to Clear Channel.
>
> (I could never figure out why CC never went after WMEK
> Auburn-Portland, ME, the station flipped to "Kiss" while CC
> was in the process of dealing out lawsuits.)
>

That's not exactly how it works. "Kiss" is a trade/service mark. All trade/service marks are subject to "prior users." That is, even if you get your trade/service mark registered with the Trademark Office, anyone at all who was using it before you has superior rights to any that you have. Gannett actually had trade/service marked "Kiss" for KIIS LA in the 1990's. Whether they should have been entitled to is another matter entirely, but there are a lot of stations that used it prior to KIIS and they are entitled to continue doing so. Clear Channel hasn't been really active with the "Kiss" mark since it discovered that creating a national "Kiss brand" simply isn't good business stragtegy. However, if you do not enforce your rights, you an lose them. If I were a station owner considering using "Kiss" I certainly would consult an attorney prior to doing so.
 
> That's not exactly how it works. "Kiss" is a trade/service
> mark. All trade/service marks are subject to "prior users."
> That is, even if you get your trade/service mark registered
> with the Trademark Office, anyone at all who was using it
> before you has superior rights to any that you have. Gannett
> actually had trade/service marked "Kiss" for KIIS LA in the
> 1990's. Whether they should have been entitled to is another
> matter entirely, but there are a lot of stations that used
> it prior to KIIS and they are entitled to continue doing so.
> Clear Channel hasn't been really active with the "Kiss" mark
> since it discovered that creating a national "Kiss brand"
> simply isn't good business stragtegy. However, if you do not
> enforce your rights, you an lose them. If I were a station
> owner considering using "Kiss" I certainly would consult an
> attorney prior to doing so.
>
In the case of KISS, CC would have had a difficult time getting that station to stop using Kiss simply because of the call letters. They would have had to petition with the FCC to get the call letters revoked so then they could go after Regent Broadcasting if they used Kiss in any way. As for the Kiss FM in Milwaukee, CC tried to go after Entercom, but Entercom refused and still call their top 40 station Kiss FM. The reason CC never pursued it was because Entercom's sister station WMYX was the first station in the country to call themselved The Mix, and would go after CC them on that. I believe that was correct.

As for WTMX in Chicago, they use the slogan: "Todays new music & whatever we want." Bonneville is getting sued on that now that Infinity Broadcasting has a Jack FM in Chicago. Last year the Jack clone Nine FM when it operated just on WRZA 99.9 Park Forest IL, they got hit with a C&D order because a DJ was calling himself Jack Effem. Since Sky Daniels left Nine FM, Jack went back to his original name Matt Dubiel.
 
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