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.

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Companies: village voice, yelp

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Comments on “Best Of The Trademark Bullies: Village Voice Sues Yelp Over 'Best Of' Lists”

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24 Comments
Anonymous Coward says:

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.

Anonymous Coward says:

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?

Anonymous Coward says:

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.)

?

Anonymous Coward says:

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.”

out_of_the_blue says:

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.

Gothenem (profile) says:

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.

GMacGuffin says:

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.

Anonymous Coward says:

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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