Everyone knows Oprah Winfrey. Attractive, eloquent and charismatic, she’s a brand unto herself. However, she recently came out on the short end of the stick in a trademark dispute with Simone Kelly-Brown, the owner of the registered service mark “Own Your Power.” Oprah’s media empire had used this phrase in a number of publications, at an event, and on their website. Following the Oprah Magazine’s Own Your Power cover, Kelly-Brown and Own Your Power Communications, Inc. received numerous inquiries from people who appear to have confused Kelly-Brown’s services with Oprah’s Event, Website, and Magazine. Kelly-Brown, who had received a federal registration for the service mark in 2008, filed suit against Oprah for trademark infringement. Team Oprah moved to dismiss the lawsuit claiming her use was not that of a trademark. The defense of fair use requires proof that the use was made; other than as a mark, in a descriptive sense, and in good faith.
The New Jersey District Court agreed with Defendant Oprah dismissing the case on her Motion. They found that the Plaintiff, Kelly-Brown, had failed to show Oprah’s use of the phrase as a mark. Citing Oprah’s stature, there could be no confusion as any consumer would find the claim of her goods and services being those of the Plaintiff difficult to believe. They also found Oprah’s use to be descriptive and in good faith. While the District Court placed the burden of showing use as a mark on the Plaintiff, the Second Circuit disagreed declining to establish a rule requiring Lanham Act plaintiffs to show that the defendant was using the allegedly infringing content “as a mark” in order to establish consumer confusion.
In Simone Kelly-Brown v. Winfrey et al., they pointed to reverse confusion as to source. Here, it was entirely plausible that the senior mark user’s services (Kelly-Brown’s) could be perceived as being affiliated with Oprah, the stronger junior user. And that Plaintiff satisfied any allegation of mark requirement by its pleadings pointing out its use on the internet and in publications. With respect to the alleged descriptive nature, the Court noted that the phrase “Own Your Power” differs from the sort of phrase which courts usually find to be used descriptively distinguishing it from the phrase “Sealed with a Kiss.” Finally, that Oprah’s trademark search for use of “OWN” for Oprah Winfrey Network should have disclosed Plaintiff’s “Own Your Power” mark disputing the claim of good faith.
My takeaway is that Team Oprah’s use of the phrase “Own Your Power” was an attempt to create an association, to build a sub-brand under her. However, it will take evidence to show that a likelihood of confusion exists and therefore infringement by Oprah. Look at the images in the linked court opinion and let me know if you agree.
William Tennant 