Published by LawTechie - November 17, 2011 - LawTechie

Two of New York’s biggest “off-beat” entertainment mags are having a fight over the “Best of NYC” trademark, with the Village Voice filing a complaint in the Southern District of New York accusing Time Out New York of infringing on its registered trademark. Contrary to the paidContent.org article, “Village Voice Claims It Owns ‘Best of NYC’ Phrase,” which covers this suit in-depth, the Village Voice does indeed own the registered trademark (USPTO Reg. No. 3479806), so the question here is whether the USPTO incorrectly granted a registration to the Village Voice for what is, in reality, a generic phrase.

Today we’ll take a crack at deciding whether Time Out New York has a good defense to the Voice’s claims, specifically whether Time Out can argue that “Best of NYC” is a generic phrase for the “goods or services” it represents (our colleagues at The TTABlog are our usual go-to for this sort of thing, and we hope to see them opine on this issue as well… but in the meantime, I’ll bask at finally beating them to the punch on a trademark question). Here goes:

“The critical issues in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.” H. Marvin Ginn Corp. v. Int’l Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986):

Determining whether a mark is generic therefore involves a two step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?

As these genericness issues go, the parties will be required to submit reams of evidence showing whether or not the general public associates the phrase “Best of [some city]” with “listing individuals and businesses that have achieved excellence in areas of interest to the general public” (the registration description of services). Since we are not attorneys for either parties — and therefore not being paid to go through reams of evidence — I will rely on a bit of anecdotal evidence and a good amount of conjecture:

When I (or a fellow consumer) want to find the best anything in town (e.g., the best dog run in New York”), chances are that my first Google search will be either “best dog run in New York” or maybe “best dog runs of New York,” so to that extent, “Best of [some city]” could very well be considered a genus representing a listing of top choices of a particular species of goods or services in a particular area. Again, this is only anecdotal evidence, but to the extent that Time Out New York bases its defense on the potential genericness of the trademark, it is rather plausible that we will see an analysis of most common Google searches among the evidence.

An interesting side note about this case is that the trademark’s TDR shows that Time Out New York is not the Voice’s first defendant with regard to this trademark. The Voice had previously sued two other companies (in Nov and Oct 2010) over the same mark — those ended in settlements most likely because the defendants did not have the resources to go up against the Voice.

Time Out certainly has the resources, so it will be interesting to see whether the Voice made the misstep of picking on someone its own size which could, potentially, result in the cancellation of its trademark.

LawTechie is a blog focusing on trends in tech and digital media. Areas covered include intellectual property, cyberlaw, venture capital, transactions and litigation as they relate to the emerging sectors. The blog is edited by the firm's partner Tim Bukher with contributions from the firm's experts in their respective areas of law.

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