Somebody stole my look! trademark infringement

Although many significant changes have occurred in the patent law world recently, the same can be said for federal trademark law. For example, a recent decision from the Second Circuit Federal Court of Appeals became high profile because of the celebrity status of one defendant in Kelly-Brown et al. v. Oprah Winfrey et al. In this case, Ms. Winfrey, her company and affiliates [hereinafter “Winfrey”] created a media campaign that included the logo “Own Your Power” that is federally registered by Ms. Simone Kelly-Brown and her company Communications, Inc. [hereinafter “Kelly-Brown”].

It is undisputed that Winfrey published a magazine cover, hosted an event and built a website that all prominently displayed or used the phrase “Own Your Power.” Kelly-Brown challenged Winfrey’s activity as trademark infringement, along with other related economic damage to her own company. Winfrey contended that the federal trademark/service mark infringement statute requires that Kelly-Brown initially establish that Winfrey’s use of the phrase qualified as a trademark use. However, the appellate court concluded that the federal trademark statute did not require use AS a trademark to file a lawsuit for trademark infringement. Instead, the law only requires that there be unauthorized use OF a trademark in business transactions to qualify as trademark infringement. In other words, other requirements for trademark/ service mark use under the federal statute, such as formatting and method of attachment of a mark to goods and/or services, are not necessary to properly bring trademark infringement lawsuit.

Winfrey also contended that her display of “Own Your Power” was a fair use of the logo “Own Your Power” because the logo is (i) descriptive of her promotional transactions and (ii) did not represent the source of services and products and (iii) there was no bad faith in her use of the phrase. However, the appellate court concluded that Winfrey’s use of the phrase was not descriptive of the events and publications, in part because there were no articles in the publications about ‘owning power.’ Consequently, the outcome might differ if Winfrey had used the phrase to describe a publication’s substantive contents

The appellate court also concluded that Winfrey had used the phrase “Own Your Power” as a trademark and service mark to advance her own branding portfolio. In reaching this conclusion, the court observed that “Own Your Power” (i) appeared in Winfrey’s events and publications over a long time period and (ii) it was therefore plausible, subject to evidence, that “Own Your Power” was being established as part of Winfrey’s marketing and brand in the minds of consumers, and (iii) thereby causing confusing with Kelly’s-Brown’s registered mark. In particular, the appellate court distinguished Winfrey’s use from a situation where the phrase occurred less conspicuously in a single instance. The court also found that there was a plausible occurrence of bad faith if (i) Winfrey had been aware of the federal registration of “Own your Power” but (ii) nevertheless she deliberately disregarded Kelly-Brown’s ownership of this logo.

The appellate court left open the possibility that Winfrey’ use was (i) coincidence and (ii) not part of a long-range plan to usurp Kelley-Brown’s mark. One should also note that (i) this appellate court decision is not national in scope and (ii) other federal appellate courts do not agree with this court’s interpretation of federal trademark law.

© 2013 Adrienne B. Naumann, Esq.
Ms. Naumann does not endorse or sponsor the advertisements at


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