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Naperville, IL Development Project Forced To Drop Name To Avoid Public Confusing It With City 1.7K Miles Away

from the under-the-bridge dept

Lots of trademark disputes are stupid. Lots of trademark disputes portray a great deal of hand-wringing that is laughable at best. And lots of trademark disputes end up being settled despite not being even remotely valid. But very few trademark disputes have to do with the naming and promoting of commercial developments when the geography that separates them is over 1,700 miles.

But that’s the case in the recent news that the City of Naperville in Illinois has dropped the name of its Water Street District development due to a complaint by the city of Henderson in Nevada.

It seems the city of Henderson, Nev., “owns exclusive, nationwide rights” to use the name Water Street District, and fired off a letter to Naperville officials in 2017 after learning the city and Water Street businesses were using the same name to refer to the area where the Hotel Indigo, Sparrow Cafe, Southern Tide and other stores, restaurants and a parking deck are located, according to city documents.

“The letter asserted that the use of that phrase by the city of Naperville and by the Water Street property owner is unauthorized and violates the city of Henderson Redevelopment Agency’s trademark rights protected by registration with the U.S. Patent and Trademark Office in August of 2014,” city documents said.

This is where I remind everyone yet again that trademark law stipulates that infringement only happens in cases where there is real or potential confusion in the public as to the source of a product or an affiliation between two entities. In this case, the two locations concerned are quite literally more than 1,700 miles apart. I know this because Naperville is roughly a seven-iron away from my home, whereas the Nevada dessert is most definitely not. So what possible confusion could be had in this case? None, of course.

Now, Henderson attempts to come off as something of a reasonable good guy in all of this by allowing Naperville and the developer to still name its development Water Street District, but neither can actually, you know, tell anybody that via the normal marketing means.

While Henderson does not have an issue with Naperville’s continued use of Water Street District as part of ordinances previously approved, the settlement between the two cities and the property owner specifies neither will use Water Street District when otherwise referring to the development.

That means the phrase will not appear in newsletters, directories, maps or on goods, such as hats, pullovers, shirts, mugs, beach bags or metal key chains, city documents said.

Which is a shame, honestly. It’s understandable why folks roll their eyes at this type of threat and simply cave as the easier option, but it sure would be nice to see some fight from entities so unfairly and absurdly targeted.

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Comments on “Naperville, IL Development Project Forced To Drop Name To Avoid Public Confusing It With City 1.7K Miles Away”

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24 Comments
Magellan says:

Re: Re: Distance is Irrelevant

Trademark Law says nothing about distance (no matter how calculated)

Key legal phrase here for infringement is “potential confusion in the public”.

Words “potential” & “public” are very vague — it’s certainly ‘possible’ that some person(s) somewhere in the ‘public’ has the future ‘potential’ to confuse the two entities in dispute here.

“Think of the average American — and realize that half of the public is dumber than that” — George Carlin
(that is median IQ is 100)

Point is that government people frequently write dumb laws and dump them on the courts to sort out. This is a huge burden on on society and often prompts judges to legislate from the bench.

carlb (profile) says:

an effective dihydrogen monoxide ban would have prevented this

“The letter asserted that the use of that phrase by the city of Naperville and by the Water Street property owner is unauthorized and violates the city of Henderson Redevelopment Agency’s trademark rights…”

…which never should have been issued as everyone knows that Water Street is the main street of St. John’s, Newfoundland and any other city using the same or deceptively similar names for one of its streets is likely to create public confusion. There’s no water in Nevada, it’s desert and thousands of miles from the Atlantic Ocean.

madasahatter (profile) says:

Geographically Challenged

The city of Henderson, NV must have some the dimmest of the dim. There is no way anyone with a couple of functioning brain cells would ever the confuse the two water districts. This is much like the several towns in the US named Princeton, Nashville, Atlanta (there is one in NY). Depending on context and location it is pretty obvious whether you are talking about ‘the’ Princeton, Nashville, Atlanta or one of the others.

Pleny (the most recent) says:

Hmmmm ... More on morons

The city of Portland, Maine might be considering “legal” action against the city of Portland, Or. because because the latter city deployed FIVE police officers to arrest a homeless person stealing electricity by charging a cell phone in a public building, and they did not want to be mistaken for such moronic conduct.

Anonymous Coward says:

Re: Re:

Naperville is one of the richest cities in IL and has a population of ~150,000. They could absolutely afford to litigate this, if they really wanted to. I assume they didn’t because the cost of paying Naperville lawyers to argue the case would so far outweigh the (probably considerable) rebranding costs that it’s not even remotely worth it.

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