A federal court has ruled, on multiple grounds, that motivational speaker Simone Kelly-Brown failed to show that Oprah Winfrey and related defendants had infringed on the service mark “Own Your Power”, granting the defendants’ motion for summary judgment.
Background
Simone Kelly-Brown and Own Your Power Communications (collectively “Kelly-Brown”) sued Oprah Winfrey and production and media companies Harpo, Inc., Harpo Productions, Hearst Corporation, and Hearst Communications, alleging, under the Lanham Act and common laws, that the defendants unlawfully used the registered mark “own Your Power” on the cover of Oprah Magazine and at a magazine-related event, on their website and social media accounts, and on a TV show. Kelly-Brown claimed the defendants use of the “own Your Power” phrase constituted trademark infringement under Section 32 of the Lanham Act, and false designation of original and unfair competition under Section 43 of the Lanham Act.
The defendants sought summary judgment, and Kelly-Brown opposed. Granting summary judgment, the court ruled: (1) the phrase “Own Your Power” was not protected; (2) the evidence did not establish a likelihood of consumer confusion; and (3) the “fair use” defense applied. A brief discussion of the court’s findings follows below
“Own Your Power” Phrase Not Protected
First, the court the court noted that Kelly-Brown had been issued a federal registration for the stylized service mark “Own Your Power” in lower-case, light-blue script. Therefore, the registration was limited to the stylized phrase in light blue script, and the court Kelly-Brown possessed no claim over the phrase itself.
The court also found the defendants’ demonstrated that the phrase lacked the requisite distinctiveness to acquire trademark protection. Kelly-Brown’s use of “Own Your Power” was found to be merely descriptive since it referred to the life and career-empowering services Kelly-Brown provided. Because the mark was descriptive, Kelly-Brown had to establish a secondary meaning before a protectable interest was created.
To determine whether a mark has acquired a secondary meaning, courts in the Second Circuit look to the following factors: (1) advertising expenditures; (2) consumer studies linking a mark to a source; (3) unsolicited media coverage of the product; (4) sales success; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark’s use. Based on the evidence produced by the parties, the court found that Kelly-Brown could not establish secondary meaning.
No Likelihood of Confusion or Proof of Infringement
Even if Kelley-Brown’s mark was entitled to protection, the Lanham Act also requires proof that the defendants’ use of the phrase created a likelihood of consumer confusion, based on the following factors: (1) the strength of the mark; (2) the similarity of the marks; (3) the proximity of the products; (4) the likelihood that the plaintiff would bridge the gap; (5) actual confusion; the “reciprocal” of the defendants’ good faith in adopting its own mark; (7) the quality of the defendant’s product; and (8) the sophistication of the relevant buyers. Finding Kelly-Brown’s mark to be weak, that visual and contextual differences existed between the mark and defendants’ uses, that Kelly-Brown and the defendants were not competitors (as a small-scale consulting company versus a global media empire), no evidence of actual confusion, and that the defendants had acted in good faith, among other things, the court found no likelihood of confusion and no proof of trademark infringement by the defendants.
Fair Use
Finally, even if the plaintiffs could have proven infringement, the court found that the defendants’ use of the “own Your Power” phrase would be protected by the would be protected by the fair use defense because defendants’ use was (1) other than as a mark; (2) descriptive; and (3) in good faith.
IP & ENTERTAINMENT LAW INSIDER 