Author, speaker, coach, and radio show personality Simone Kelly-Brown has sued television host, actress, producer, and philanthropist Oprah Winfrey over the trademark Own Your Power.

Kelly-Brown has had the mark Own Your Power registered in the United States since 2008 and claims a date of first use back to 2006.  In the complaint filed against Oprah and others, Kelly-Brown and her company Own Your Power Communications, Inc. accuses Oprah of the “brazenly unlawful disregard for the existence and use of [her] Company’s Trademark” as well as being at the helm of a “Partnership and Campaign to destroy [the] Company’s goodwill.”  Kelly-Brown further states that it was “unconscionable commercial practice, deception, fraud, false pretense, false promise, and misrepresentation” for Oprah to use the mark Own Your Power without her permission.

Months prior to filing the lawsuit, Kelly-Brown’s attorney, well-known intellectual property attorney Patricia Lawrence-Kolaras sent Oprah a detailed twelve (12) page letter setting out Kelly-Brown’s claims of trademark infringement.  According to the complaint, after receipt of this letter “On April 20, 2011 Harpo attorney David Fleming, Esq. of Brinks Hoffer Gilson & Lione acknowledged representation of members of the OYP Partnership and refused to direct his clients to halt the infringement of Kelly-Brown’s registered OYP Trademark.”  Translation: go pound sand.

WHO IS IN THE CASE AND WHO CAN GET OUT

The defendants named in the lawsuit are:  Oprah Winfrey, Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, Hearst Communications, Inc., Wells Fargo & Company, Estee Lauder Companies, Inc., Clinique Laboratories, LLC, and Chico’s Fas, Inc.

Since the complaint was only recently filed, none of the defendants have responded.

According to the complaint, the basis for including Wells Fargo, Estee Lauder, Clinique and Chico’s is  an alleged “partnership” with those sponsors and Oprah’s company.  As evidence, attached to the complaint is an advertisement where these sponsors of the event are listed under the heading “IN PARTNERSHIP WITH.”

Needless to say, this evidence is a bit flimsy.  We will see shortly whether this evidence is enough to survive an anticipated motion to dismiss by these entities.  It is difficult to image that there is actually a “partnership” among Oprah Winfrey’s company and its advertisers and that this “partnership” collectively infringed Kelly-Brown’s trademark.

Oprah Winfrey should also be able to personally get out of the case.  To keep Oprah in the case Kelly-Brown will need to show that Oprah actively and knowingly participated in furtherance of the alleged trademark infringement.  Considering that most of the alleged infringement occurred prior to the notice letter sent by Kelly-Brown’s attorney, it is doubtful that Oprah even knew about Kelly-Brown’s alleged trademark rights until recently.  Moreover, it is unlikely Oprah was directly involved in what amounts to an event name and/or catch phrase.

As for Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, Hearst Communications, Inc., at least one of these entities will be stuck in the case.  The other entities will likely be dismissed for being too far removed from any alleged trademark infringement.

BUT WHAT’S THE HARM?

While it appears that Kelly-Brown has legitimate trademark rights and that those trademark rights may have been infringed, her biggest hurdle will be proving damages.  In fact, it is possible that Kelly-Brown’s “Own Your Power” event which purportedly took place two days after Oprah’s “Own Your Power” event had an increased attendance from persons believing they were going to see Oprah’s event.  While that type of consumer confusion is possibly trademark infringement, Kelly-Brown did not exactly loose any money because of it.

The best argument for damages Kelly-Brown has is for money to cover “corrective advertising” so the public no longer associates “Own Your Power” with Oprah.  Based on the market reach of Oprah, an expert witness will certainly be able to come up with a sizable sum.

Stay tuned.  This one is just getting started.

Long time disc jockey DJ Paulie has sued Jersey Shore star DJ Pauly D for trademark infringement.   Also caught up in the lawsuit is the Palms where defendant DJ Pauly D is a resident DJ for Moon, Rain, and the Palms Pool in Las Vegas.

Although not nearly as famous as DJ Pauly D, the older DJ Paulie claims to have used his trademark in interstate commerce as early as 1973.  DJ Paulie’s biggest claim to notoriety stems from his claim in his complaint that,

After the attack on 9-11 in New York City, [DJ Paulie] was hired by the United States Post Office to write the music and produce their official 9-11 Memorial Fundraising Song, “September Mourn”, for the benefit of the victims’ families.

(While it appears that DJ Paulie did produce “September Mourn” based on the exhibits attached to the complaint, I was unable to locate anything to indicate that DJ Paulie was hired by the U.S. Post Office or that the Post Office ever had and “official 9-11 Memorial Fundraising Song.”)

DJ Paulie complains that DJ Pauly D’s success has negatively affected his search rankings. Indeed when performing a search for DJ Paulie, Google inquires whether you really meant DJ Pauly D (which is probably who most people are actually searching for).  It is unknown when DJ Paulie’s website became completely swamped by the Jersey Shore actor, but many Google and Bing algorithm tweaks in recent years  seem to favor “big brands” and Goggle’s algorithm clearly recognizes DJ Pauly D as the more prominent “brand.”

DJ Pauly D’s attorneys have not yet responded to the complaint, but I suspect that they will argue that the older DJ Paulie abandoned the mark at some point in his long carrier and did not begin using it again until 1999 or 2000 when DJPaulie.com was launched.  DJ Pauly D could then argue that he is actually the senior trademark user.   According to DJ Pauly D’s bio he has been a DJ since the age of 16 (1996).

Over at the trademark office, DJ Pauly D’s pending applications for the mark DJ Pauly D have been rejected by the trademark office based on a likelihood of confusion with DJ Paulie’s mark.  DJ Pauly D is in a tough spot at the trademark office as there is little chance of convincing the examining attorney who (rightly) has identified this likelihood of confusion issue.  DJ Pauly D’s trademark office options at this point are: (i) appeal the matter to the trademark trial and appeal board; (ii) settle with DJ Paulie and enter into a co-existence agreement; or (iii) start a cancellation proceeding at the trademark office against DJ Paulie arguing that DJ Pauly D is actually the senior trademark user.

Back before anyone could remember, a “geek” was a carnival performer who entertained and disgusted his audience with morbid and gross stunts.  Today, the carnival stunts are left to modern day performers such has superstar Johnny Knoxville and his Jackass crew who no one would refer to as “geeks.”

Today, geeks distinguish themselves by being able to read binary and hexadecimal numbers as well as trace the origins of the movie Blade Runner to the book “Do Androids Dream of Electric Sheep?”

So it is natural to use the work “geek” in conjunction with the sale and service of computers, right?  That’s what Newegg believes, rebuking a cease and desist letter from Best Buy which demanded that Newegg cease its use of the trademark GEEK ON.  According to Best Buy, its rights in its various GEEK SQUAD marks are being damaged by Newegg’s GEEK ON mark.

As the old adage goes, a good sketch is better than a long speech.  Compare the logos for yourself:

Does Best Buy own the word “geek.” Does it own the work “geek” when used as part of a black and orange logo? Does it own the work “geek” when used to advertise computers and computer repair AND a black and orange logo is used stylized with an “on” button?

When Best Buy sent its cease and desist letter on May 26, 2011 it stated:

Given Best Buy’s long-standing prior use of the GEEK SQUAD mark, Geek Squad Trade Dress, and Tie and Power Button Design, Best Buy is concerned that Newegg’s use of the Geek On Logo is likely to create confusion among consumers and to dilute the distinctive quality of the GEEK SQUAD mark in violation of Best Buy’s trademark rights.  Best Buy is particularly concerned because the Geek On Logo features the GEEK-component of Best Buy’s GEEK SQUAD mark, is depicted in the same orange-and-black color scheme as Best Buy’s Geek Squad Trade Dress, features a power button design that is very similar to the Geek Squad Tie and Power Button Design, and is used to promote Newegg’s competing consumer electronics retail services.

On June 6, 2011, Newegg responded by telling Best Buy to go pound sand.  Newegg’s response letter stated:

First, we respectfully disagree with your assertion that Newegg’s “Geeek On” promotions constitute trademark infringement.  Best Buy Neither owners nor has exclusive rights to the word “Geek”, and best Buy neither owns nor has exclusive rights to use a general, unstylized computer power button icon.

No mention was made by Newegg of the combination of Geek, the power button, and a black and orange color scheme.   Thus far Best Buy has not filed suit and Newegg continues to use its Geek On logo.  It will be interesting to see if either company decides to geek out and take further action.