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Trademark

by Mike Masnick

Fri, Nov 2nd 2012 11:50am




Filed Under:
best of, bullies, trademark, trademark bullies

Companies:
village voice, yelp


Best Of The Trademark Bullies: Village Voice Sues Yelp Over 'Best Of' Lists

from the answer:-none dept

The latest in a long series of stupid trademark bullying lawsuits comes to us courtesy of The Village Voice (who should know better than to file bogus lawsuits). The Voice is suing Yelp for trademark infringement. The Village Voice somehow convinced the USPTO that it deserved a trademark on the phrase "best of [place name]" for certain locations -- such as "Best of Seattle" or "Best of San Francisco." Yelp, quite reasonably, also uses the term of "best of" to describe certain places:
Village Voice is claiming that Yelp's infringement is "willful" because it notified the company, and Yelp apparently told them to go away. It's also ridiculously claiming that Yelp's usage has "irreparably harmed" the company. I realize that's standard language used in such lawsuits, but seriously?

The EFF points out that the US Patent and Trademark Office is partly to blame for allowing registrations on such trademarks:
What is going on at the Patent and Trademark Office?  For decades, folks have been complaining (with good reason) that the patent examiners need to do a better job of screening out bogus patent applications. It’s clear that the problem extends to the trademark side as well. The PTO has allowed companies and individuals to register marks in any number of obviously generic and/or descriptive terms, such as “urban homestead” (to refer to urban farms), “gaymer” (to refer to gay gamers), and “B-24” (to refer to model B-24 bombers).

Once a mark is registered, it is all too easy for the owner to become a trademark bully. And while companies like Yelp have the resources to fight back (as we expect it will), small companies and individuals may not. Just as dangerous, the trademark owner may go upstream, to intermediaries like Facebook who have little incentive to do anything other than take down an account or site that’s accused of infringement.
Separately, the EFF asks the most important question: who is actually being deceived here? There is no confusion. No one associates "best of" with the Village Voice. Everyone reads it as a perfectly normal descriptive term, rather than a trademark belonging to any single party.


24 Comments | Leave a Comment

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  •  
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    Gwiz (profile), Nov 2nd, 2012 @ 12:03pm

    Can we put this article in the "Best of the Internet" section?

     

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    Anonymous Coward, Nov 2nd, 2012 @ 12:07pm

    Speaking of people who ought to know better, the EFF should know that there's nothing wrong with allowing registration of "descriptive terms", provided there is sufficient evidence of secondary meaning.

    Now, whether this particular mark should have registereted is one thing, but calling out the PTO for registereing "descriptive terms" makes EFF look sort of foolish.

     

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      Anonymous Coward, Nov 2nd, 2012 @ 12:28pm

      Re:

      If I'm not mistaken "descriptive terms" are simply adjectives.

      Maybe I should go trademark all the adjectives in your comment and see what's left....


      Also, I think you're confusing Trademark with copyright again. Trademarks are supposed to help customers not be confused about the product they are buying. Simply put by looking at a "Best of" list on Yelp is there any way I'm going to be confused about what it is or who is affiliated with the list? Is there anything that would lead me to believe Village Voice is involved? Is there anything that lower's the value of Village Voice's "Best of" lists?

       

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      GMacGuffin (profile), Nov 2nd, 2012 @ 1:08pm

      Re:

      "Best of Seattle" is a 2F registration in the Principal Register, meaning that they convinced the USPTO that there was secondary meaning, i.e., that the consuming public associates the term "best of" with Village Voice.

      Speaking anectodally, meaning me, I sure the heck don't, and apparently neither do some of these commenters. So I'm with the EFF on this one.

       

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    trish, Nov 2nd, 2012 @ 12:21pm

    it's foolish to trademark descriptive terms. If assigning secondary meanings to words makes the primary meaning unusable because it's been trademarked, that's foolish. Defending legislator poop as right because it's law doesn't make it not poop.

     

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    John Fenderson (profile), Nov 2nd, 2012 @ 12:30pm

    Best of

    No one associates "best of" with the Village Voice.


    The Village Voice clearly does.

    But this is true -- until I read this post, I would never have linked "best of" phrases with the Village Voice. You know what I do link such phrases with? Pretty much every small weekly in every town I have ever set foot in.

     

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      gorehound (profile), Nov 2nd, 2012 @ 2:55pm

      Re: Best of

      And for Decades at that.Best of lists were around even 3 and more Decades ago.

      These Patents are so damn lame.Who the hell in their Right Mind allows Copyrights and Patents on English Language and Normal usage of Language.
      Whoever issues these things should be thrown out of their job and investigated as well for Corruption.

       

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      identicon
      Anonymous Coward, Nov 2nd, 2012 @ 3:23pm

      Re: Best of

      No one associates "best of" with the Village Voice.
      The Village Voice clearly does.


      • “In the beginning God created the heaven and the earth.”

      • “When in the course of human events...”

      • “Four score and seven years ago...”

      • “It was the best of times...”

       

      Someone care to rank these? Or maybe offer up another entrant?

      (Note that I've excluded “Eh bien, mon prince...” on the grounds that it's in French—even in English language translation. If you've got another entry, then instantly-recognizable opening phrases only, please.)



       

       

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    Baldaur Regis (profile), Nov 2nd, 2012 @ 12:35pm

    Ironically, Village Voice Media Holdings also owns the trademark to "EVIL EMPIRE". It's true!

     

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    Anonymous Coward, Nov 2nd, 2012 @ 12:43pm

    re: Your Missive of 29 April

    "We acknowledge your letter of 29th April referring to Mr J. Arkell. We note that Mr Arkell's attitude to damages will be governed by the nature of our reply and would therefore be grateful if you would inform us what his attitude to damages would be, were he to learn that the nature of our reply is as follows: fuck off."

     

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    out_of_the_blue, Nov 2nd, 2012 @ 12:47pm

    Lawyers need to be made to take risks.

    Right now, "law practice" is win-win almost without risk for the prosecution side. Need juries able to decide beyond guilty or not, to "irredeemably stupid prosecution", with penalty of disbarred for at least five years. ONLY way to expect people to be reasonable is when forced to; goes ten times over for lawyers who are trained precisely in how to make an everyday phrase into basis for extortion.

     

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      Gothenem (profile), Nov 2nd, 2012 @ 4:48pm

      Re: Lawyers need to be made to take risks.

      Wow, it actually seems like you are agreeing with Mike on this one. I guess there is a first time for everything. Of course, trademarking something as commonly used as "Best Of" is rediculous, and should be smacked down.

      If Yelp used Village Voice's "Best Of" font, logo, and made it visually identical to what Village Voice had, I can see a case (though I still don't agree with it), but really, there is no confusion here. At all.

      You are right that law-practice is almost risk free for prosecutors, which is why there are so many silly cases happening. I like the idea of juries deciding "irredeemably stupid prosecution." That idea is actually sort of brilliant.

       

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        G Thompson (profile), Nov 2nd, 2012 @ 11:57pm

        Re: Re: Lawyers need to be made to take risks.

        Umm except a "prosecution side" is only for criminal matters.. Otherwise you have plaintiff and respondent.

         

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    Anonymous Coward, Nov 2nd, 2012 @ 12:48pm

    What with copyright claims for phrases, and trademark on words and partial phrases, speaking in public will require years to clear all the rights that may be infringed, and increase the number of lawyers beyond plague proportions. :-P

     

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      Anonymous Coward, Nov 2nd, 2012 @ 12:54pm

      Re:

      ...and increase the number of lawyers beyond plague proportions. :-P

      They already are beyond that point.

       

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    identicon
    Anonymous Coward, Nov 2nd, 2012 @ 1:13pm

    It was the best of times, it was the worst of times

    It was the best of times, it was the worst of times, it was the age of wisdom, it was the age of foolishness, it was the epoch of belief, it was the epoch of incredulity, it was the season of Light, it was the season of Darkness, it was the spring of hope, it was the winter of despair, we had everything before us, we had nothing before us, we were all going direct to heaven, we were all going direct the other way - in short, the period was so far like the present period, that some of its noisiest authorities insisted on its being received, for good or for evil, in the superlative degree of comparison only.

     

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    Jeffrey Nonken (profile), Nov 2nd, 2012 @ 1:36pm

    I guess this means the Village Voice is responsible for my Best of Three Dog Night CD?


    ... I oughta sue.

     

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    lakawak, Nov 2nd, 2012 @ 8:34pm

    When will the original Digg investors sue the Village Voice for all the value that the Village Voice's endless spam cost them?

     

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    Wewake Saynoy, Nov 4th, 2012 @ 9:49pm

    More like the Village Idiot's Voice

    How many more of these are we going to have?

     

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    Anonymous Coward, Nov 5th, 2012 @ 7:54am

    Still, you've got a self-important douchey hipster newspaper suing a self-important douchey hipster website.

    While we all lose on the trademark principles involved here, this couldn't be happening to two better organizations.

     

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