9
93QClassic.com
Guest
THE LETTER......................................................................................................................
K&L Gates LLP
1601 K Street NW
Washington DC 2006-1600
Benita P. Collier
D 202.778.9087
F 202.778.9100
[email protected]
February 20, 2014
VIA ELECTRONIC MAIL
Joe Donalson
P. O. Box 310841
Houston, Texas 77231
Infringement of the MAJIC 102.1 TM Mark
Dear Mr. Donalson:
This firm represents Radio One, Inc. (“Radio One”), owner of the service mark MAJIC102.1 TM. Radio One has long used the MAJIC 102.1 mark for over 20 years in association with its radio broadcasting services. MAJIC 102.1 has become a highly valuable asset that Radio One must protect in order to maintain its substantial good will and intellectual property rights.
We have learned that you are operating a website under the mark MAJIC 102TV which features music. An excerpt from your website is attached as Exhibit A. Because of the similarities between the MAJIC 102TV mark and the MAJIC 102.1 mark, your use of MAJIC 102TV and registration of the domain name majic102tv.com violates Radio One’s trademark rights. Radio One has not authorized you to use its mark. Radio One is not affiliated, connected, or associated with you and does not sponsor you or endorse your business. Consequently, your actions constitute, among other things, trademark infringement, dilution and false designation of origin.
Trademark law requires Radio One to act aggressively to prevent unauthorized uses of its mark to avoid consumer confusion. Accordingly, we hereby demand that you immediately cease and desist from further infringing Radio One’s intellectual property rights. To that end, we demand that you immediately:
1) Cease any and all use of the MAJIC 102TV mark;
2) Cease using the MAJIC102TV.COM domain name and immediately take down the website at www.majic102tv.com;
3) Transfer the MAJIC102TV.COM domain name to Radio One; and
4) Cease any and all use of any mark that includes MAJIC 102.1, any similar MAJIC 102 mark or any mark that is confusingly similar thereto on any other Internet websites or elsewhere.
You must fully comply with Radio One’s demands by close of business February 28, 2014. Should you fail to comply, Radio One will pursue all legal remedies available to protect its rights.
The demands made herein are not made to the exclusion of other rights or remedies, and nothing in this letter, nor any act or omission by Radio One, shall be construed as a waiver of any right or remedy possessed by Radio One, all of which are expressly reserved.
Sincerely,
/Benita P. Collier/
Benita P. Collier
BPC:bpc
cc: Michael T. Murphy
MY REPLY.........................................................................................................................................................
JOE DONALSON
PO Box 310841 [email protected]
Houston, TX 77231
Benita P. Collier
K&L Gates LLP
1601 K Street NW
Washington, DC 20006
RE: www.majic102tv.com
Dear Ms. Collier:
I am in receipt of your letter insisting that I stop using the name Majic 102 TV in connection with my international music video television channel.
In your letter, you assert that I am infringing on your client’s “Majic 102.1” trademark.
I’m sure you are aware that the “likelihood of confusion” legal standard applies to a claim of trademark infringement. This involves a complicated analysis of various factors such as the strength of the mark; the proximity of the goods; the similarity of the marks; evidence of actual confusion; the similarity of marketing channels used; the degree of caution exercised by the typical purchaser; and the defendant's intent.
While your client may have a claim to its current name “Majic 102.1,” it has no credible claim to “Majic 102” (e.g., without the point one). Various courts have ruled that trademark rights can be lost through genericity. Sometimes, trademarks that are originally distinctive can become generic over time, thereby losing its trademark protection. Courts have determined that a word will be considered generic when, in the minds of a substantial majority of the public, the word denotes a broad genus or type of product and not a specific source or manufacturer. Here, Majic 102 has become synonymous with an R&B and/or jamming oldies music format available on radio stations throughout the United States, and does not allude to the single radio station your client owns in Houston, Texas. A quick search turned up dozens of radio stations in the U.S. and throughout the world who currently use the “Majic 102” moniker. (See example logos on Page 3).
Moreover, applicable court rulings are clear that the rights to a trademark can be lost through abandonment. Here, your client has never registered a trademark for “Majic 102.1.” Many years ago, a predecessor of Radio One registered a trademark – now listed as “abandoned” -- for “Majic 102” without the point one. The status of a trademark’s registration is prima facie evidence of abandonment. Moreover, I have ascertained that for a period of several years, KMJQ ceased using the Majic 102 moniker, instead identifying itself as “102 Jamz.” Trademark law only protects marks in continuous use; companies are not entitled to hoard or warehouse marks they find potentially useful.
There is a big difference here between your client’s product and marketing, and what I have created here. Your client is government-licensed to operate in the public interest, and offers consumers in the Houston local market a specific product – e.g., an audio feed of music, news, and other information of interest via a specific allocated portion of the public airwaves (102.1 MHz). Here, consumers are not likely to be confused, as the specific product I offer is individualized and distinctive. I am an internet telecaster, not a radio broadcaster. I have published a website – majic102tv.com – with an embedded video player linking to a server in the Ukraine. Via this server, R&B and Old School music videos are streaming to computers, phones, android tablets, digital media players, and Smart TVs all over the world!
Indeed, the majority of my channel’s viewers are watching from IPs located in other states and countries. These folks cannot receive and have never heard of a radio station in Houston called Majic 102.1.
Next, I address the matter of intent. By creating a worldwide TV channel called Majic 102, I have no intent to infringe on the trademark, if any, of your client’s radio station in Houston, Texas. Rather, the Majic 102 moniker was selected because it identifies -- in the mind of consumers -- a generic R&B/Old School music format used by numerous radio stations across the country.
While it is mere speculation on my part, I predict a day in the not so distant future when radio broadcasting is gone – fading out of style like AM radio, phonograph records, and the VCR. TV broadcasting is already in sharp decline; in many markets less than 10% of viewers watch “over-the-air” programming; instead preferring cable, satellite, and/or streaming video. It’s a fact: broadcasters such as Clearchannel, Cox, and RadioOne will have to move to the Ethernet, or they will die. Many broadcasters are in denial, refusing to see the writing on the wall. By the time they wake up to the fact, my video channels will be firmly established and, if they wish, they can try and compete.
In conclusion, it is clear that your client does not have an exclusive right of use of the generic Majic 102 moniker. As such, I respectfully decline your request to surrender the domain name and/or take down my website.
Sincerely,
Joe Donalson
JOE DONALSON
K&L Gates LLP
1601 K Street NW
Washington DC 2006-1600
Benita P. Collier
D 202.778.9087
F 202.778.9100
[email protected]
February 20, 2014
VIA ELECTRONIC MAIL
Joe Donalson
P. O. Box 310841
Houston, Texas 77231
Infringement of the MAJIC 102.1 TM Mark
Dear Mr. Donalson:
This firm represents Radio One, Inc. (“Radio One”), owner of the service mark MAJIC102.1 TM. Radio One has long used the MAJIC 102.1 mark for over 20 years in association with its radio broadcasting services. MAJIC 102.1 has become a highly valuable asset that Radio One must protect in order to maintain its substantial good will and intellectual property rights.
We have learned that you are operating a website under the mark MAJIC 102TV which features music. An excerpt from your website is attached as Exhibit A. Because of the similarities between the MAJIC 102TV mark and the MAJIC 102.1 mark, your use of MAJIC 102TV and registration of the domain name majic102tv.com violates Radio One’s trademark rights. Radio One has not authorized you to use its mark. Radio One is not affiliated, connected, or associated with you and does not sponsor you or endorse your business. Consequently, your actions constitute, among other things, trademark infringement, dilution and false designation of origin.
Trademark law requires Radio One to act aggressively to prevent unauthorized uses of its mark to avoid consumer confusion. Accordingly, we hereby demand that you immediately cease and desist from further infringing Radio One’s intellectual property rights. To that end, we demand that you immediately:
1) Cease any and all use of the MAJIC 102TV mark;
2) Cease using the MAJIC102TV.COM domain name and immediately take down the website at www.majic102tv.com;
3) Transfer the MAJIC102TV.COM domain name to Radio One; and
4) Cease any and all use of any mark that includes MAJIC 102.1, any similar MAJIC 102 mark or any mark that is confusingly similar thereto on any other Internet websites or elsewhere.
You must fully comply with Radio One’s demands by close of business February 28, 2014. Should you fail to comply, Radio One will pursue all legal remedies available to protect its rights.
The demands made herein are not made to the exclusion of other rights or remedies, and nothing in this letter, nor any act or omission by Radio One, shall be construed as a waiver of any right or remedy possessed by Radio One, all of which are expressly reserved.
Sincerely,
/Benita P. Collier/
Benita P. Collier
BPC:bpc
cc: Michael T. Murphy
MY REPLY.........................................................................................................................................................
JOE DONALSON
PO Box 310841 [email protected]
Houston, TX 77231
Benita P. Collier
K&L Gates LLP
1601 K Street NW
Washington, DC 20006
RE: www.majic102tv.com
Dear Ms. Collier:
I am in receipt of your letter insisting that I stop using the name Majic 102 TV in connection with my international music video television channel.
In your letter, you assert that I am infringing on your client’s “Majic 102.1” trademark.
I’m sure you are aware that the “likelihood of confusion” legal standard applies to a claim of trademark infringement. This involves a complicated analysis of various factors such as the strength of the mark; the proximity of the goods; the similarity of the marks; evidence of actual confusion; the similarity of marketing channels used; the degree of caution exercised by the typical purchaser; and the defendant's intent.
While your client may have a claim to its current name “Majic 102.1,” it has no credible claim to “Majic 102” (e.g., without the point one). Various courts have ruled that trademark rights can be lost through genericity. Sometimes, trademarks that are originally distinctive can become generic over time, thereby losing its trademark protection. Courts have determined that a word will be considered generic when, in the minds of a substantial majority of the public, the word denotes a broad genus or type of product and not a specific source or manufacturer. Here, Majic 102 has become synonymous with an R&B and/or jamming oldies music format available on radio stations throughout the United States, and does not allude to the single radio station your client owns in Houston, Texas. A quick search turned up dozens of radio stations in the U.S. and throughout the world who currently use the “Majic 102” moniker. (See example logos on Page 3).
Moreover, applicable court rulings are clear that the rights to a trademark can be lost through abandonment. Here, your client has never registered a trademark for “Majic 102.1.” Many years ago, a predecessor of Radio One registered a trademark – now listed as “abandoned” -- for “Majic 102” without the point one. The status of a trademark’s registration is prima facie evidence of abandonment. Moreover, I have ascertained that for a period of several years, KMJQ ceased using the Majic 102 moniker, instead identifying itself as “102 Jamz.” Trademark law only protects marks in continuous use; companies are not entitled to hoard or warehouse marks they find potentially useful.
There is a big difference here between your client’s product and marketing, and what I have created here. Your client is government-licensed to operate in the public interest, and offers consumers in the Houston local market a specific product – e.g., an audio feed of music, news, and other information of interest via a specific allocated portion of the public airwaves (102.1 MHz). Here, consumers are not likely to be confused, as the specific product I offer is individualized and distinctive. I am an internet telecaster, not a radio broadcaster. I have published a website – majic102tv.com – with an embedded video player linking to a server in the Ukraine. Via this server, R&B and Old School music videos are streaming to computers, phones, android tablets, digital media players, and Smart TVs all over the world!
Indeed, the majority of my channel’s viewers are watching from IPs located in other states and countries. These folks cannot receive and have never heard of a radio station in Houston called Majic 102.1.
Next, I address the matter of intent. By creating a worldwide TV channel called Majic 102, I have no intent to infringe on the trademark, if any, of your client’s radio station in Houston, Texas. Rather, the Majic 102 moniker was selected because it identifies -- in the mind of consumers -- a generic R&B/Old School music format used by numerous radio stations across the country.
While it is mere speculation on my part, I predict a day in the not so distant future when radio broadcasting is gone – fading out of style like AM radio, phonograph records, and the VCR. TV broadcasting is already in sharp decline; in many markets less than 10% of viewers watch “over-the-air” programming; instead preferring cable, satellite, and/or streaming video. It’s a fact: broadcasters such as Clearchannel, Cox, and RadioOne will have to move to the Ethernet, or they will die. Many broadcasters are in denial, refusing to see the writing on the wall. By the time they wake up to the fact, my video channels will be firmly established and, if they wish, they can try and compete.
In conclusion, it is clear that your client does not have an exclusive right of use of the generic Majic 102 moniker. As such, I respectfully decline your request to surrender the domain name and/or take down my website.
Sincerely,
Joe Donalson
JOE DONALSON