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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@earthlink.net
All The News __ Fit To Print?
“All The News __ Fit To Print,” that’s not exactly the over a century old and well known banner slogan of the New York Times, called by some to be the greatest newspaper in the world. The real banner slogan is “All The News That’s Fit To Print,” without the question mark and with “That’s” filling the blank. It’s not surprising; the NY Times registered this slogan in 1958, giving 1896 as a date of first use. As that’s a hard date to beat and sensing an opportunity to monopolize what might be nothing more than a First Amendment declarative of a newspaper’s constitutional right to decide without any interference, from church, state, or market forces, which “news is fit to print,” and which news doesn’t deserve to be printed, our fictional NY Times (not the real one and provided for example only), has decided to sue the Boise Buffalo Hunter (locally read in Idaho, some parts of eastern Washington State and western Montana). The Boise Buffalo (as it’s locally known), stands up for its rights and proudly asserts the NY Times isn’t the only paper that can recognize print worthy news and the Boise Buffalo has at least an equal right to describe its own news picking intelligence, especially when it comes to news about buffalo in or about Boise.
However, the NY Times, resting on its incontestable registration, says to the Court “the Boise Buffalo Hunter must be stopped by a court ordered injunction and additionally it must pay our expensive NY law firm’s rather huge legal bills.” Our NY Times has on its side, a marketing survey showing readers of English language news publications, recognize the “all the news,” slogan as belonging to the Times and that anything with that slogan on it comes from the Times and besides, the surveyed readers ask “Where’s Boise?”
Before proceeding, a brief word about trademark registrations that becomes incontestable. Incontestable status is given to any mark registered for five years on the Principal Trademark Register and which has been in continuous use during that time. While not exactly the same as a “mafia made man,” an incontestable mark cannot be challenged on grounds of the dates of earliest first use but only by showing the registration is fraudulent, or is used to misrepresent or the registration or the incontestable right to use the mark was obtained fraudulently, or abandoned, or the alleged infringer is using his or her own name, or the mark is functional, or a proper name used in good faith (like Mr. McDonald opening his owner operated fast food restaurant), or, and this part is critical to our story, the alleged infringing mark is descriptive of, and used fairly and in good faith only to describe, the goods or services of such party, or their geographic origin.
As we all should know, a generic, word or combined word or slogan, can never be a trademark. The reason is the generic word is the common term by which an article or service is known and to allow a generic term to be registered, would remove that term from the common language. An example worth considering might be “fair and balanced,” as in fair and balanced news account, as used by the Fox Network.
So given an incontestable mark “All The News That’s Fit To Print,” the one recourse available for the Boise Buffalo Hunter, is to demonstrate by clear and compelling evidence, the “all the news fit to print,” is no more then a declarative statement of a fundamental First Amendment right to select the “news” it chooses to print, as the only “new” that’s fit to print.
At this point, our fictional NY Times is facing a dilemma. It is clear the Buffalo Hunter’s defense will be its publisher’s testimony that it is only using the disputed term to fairly and in good faith, describe its editorial policy for careful news selection and that precise statement is the only concise, typographically cost efficient way of expressing that concept. The Boise Buffalo will then argue the wide spread demonstrated use by others of the declarative “All The News That’s Fit To Print,” to express a quality of news, as in the case of the Boise news about the local buffalo. Third, it will argue its fundamental First Amendment right to free press would suffer undue interference if it is prevented from describing itself in terms that are used in good faith and in a fair and balanced manner.
In making its argument, the Buffalo or the Hunter, as its readership sometimes calls it, will bring in the same Lanham Act in its defense, that the NY Time is using as grounds for its service mark right. The defense comes in when the alleged infringing use of the mark is fair and in good faith only to describe the Buffalo Hunter’s services. Fair use cannot be prevented if the mark is used in its primary or descriptive sense.
The next logical question is whether “All The News Fit To Print,” is descriptive? To answer, we must apply the rule for descriptive marks. As a rule a merely descriptive mark must immediately convey information concerning a quality or characteristic of the product or service. The perception of the word, by the relevant consumers sets the standard for determining descriptiveness. Thus, a mark is merely descriptive if the ultimate consumer immediately associates it with a quality or characteristic of the product or service. On the other hand, if a mark requires imagination, thought, and perception, to arrive at the qualities or characteristics of the goods [or services], then the mark is not descriptive but suggestive, and that’s O.K.
The next question is can a descriptive mark ever be registered. The answer is yes if proof is given of substantially exclusive and continuous use as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. One common form of proof of exclusive and continuous use is advertising. If that proof is accepted by the U.S. Patent and Trademark Office, a registration can be issued. That brings us back to our original question, whether the Boise Buffalo is using “All The News Fit To Print,” descriptively, fairly and in good faith only to describe its new services and with a constitutionally guaranteed fundamental right under the First Amendment.
Before we go on, we have to consider whether the Boise Buffalo is claiming its fundamental First Amendment free speech rights or right of free press, or both. I would say the claim is to each right, as free speech would be broad enough to cover any non-commercial statement and free press would be directed against any attempt to regulate or control any conduct of newsgathering and dissemination, and somewhere the two rights merge.
In measuring First Amendment rights against trademark rights, the constitutional test balances the public's interest in free expression and free press against a compelling public interest in enforcement of trademarks under the Lanham Act. The public’s interest in trademark enforcement must be show to be a compelling interest before the test will be applied. On constitutional grounds, a compelling interest would be in preventing the destruction of our society and would not be based only on grounds of commercial advantage. In strict Lanham Act terms, this test will be applied to determine if a descriptive mark is being used fairly and in good faith only to describe the new gathering and reporting of a newspaper such as the Buffalo.
So let us examine “all the news fit to print,” without the caps, by determining how the public at large uses the expression and whether that use is understood as other than our NY Times. We can turn to a dictionary but that is not likely to have that whole expression. While a search of the USPTO database using “news” produces almost four thousand marks, a search using “news,” and “fit,” produces only two marks, each owned by the NY Times. However a search of the Internet for “all the news fit to print,” discloses a wide-ranging use with apparent motives ranging from parody to plain descriptive use. The Internet search results do argue for a descriptive use to fairly and in good faith state as a goal, an intention to select news according to the newspaper’s editorial policy and a narrow application of the slogan to newspapers of general circulation. Score one for the Buffalo.
Second, how else could the Boise Buffalo express its strict policy of printing only news as its sees “fit?” As it cannot express that thought in another way, its ability to state it control over its advertised newsgathering and printing policies, becomes an issue. Third, while the NY Tines may have coined the term in 1896, over the years it has been adopted by the many and used generically to express in the only words capable of expressing a discerning selection of news that the readership would agree is fit to print. All of which brings us back to the first question we should have asked, “who would ever confuse the Boise Buffalo Hunter with the NY Time?
While all this is fictional, it does illustrate a point, connecting the recent controversy over the trademark “Fair and Balanced,” registered to FOX News and used in the anti-Fox book title featuring a picture of anchor person O’Reilly under “Liars and the Lying Liars Who Tell Lies, A Fair and Balanced View.” You have all the tools to figure out the answer, so go to it and leave the politics behind. Politics will confuse the analysis. However, in this case, evidence of “fair and balanced,” as parody, is compelling.
Write when you think you have the answer and please do include all the facts and logic supporting your conclusion.
Stay Tuned for Next Month's Article!
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@earthlink.net . |
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