Former television talk show host and media mogul, Oprah Winfrey, has won, and finally ended, her five year trademark battle with life coach and motivational speaker, Simone Kelly-Brown.
In 2011, Kelly-Brown sued Winfrey, her company Harpo Productions Inc., and her publisher Hearst Corp. for using the phrase “Own Your Power”. The phrase was used on the cover of O, The Oprah Magazine, at an event for the magazine, on Winfrey’s television show, and on Winfrey’s website and social media pages. In 2008, Kelly-Brown applied to register a trademark for the three-word phrase with the United States Patent and Trademark Office (USPTO). The mark is described as “consist[ing] of light blue scripted letters which create the words ‘Own Your Power.’”
In the 2011 lawsuit, at the District Court of the District of New Jersey, Kelly-Brown alleged various causes of action under the Lahnman Act, which included trademark infringement, reverse confusion, and false designation. The Lahnam Act “protects the owner of a federally registered mark against the use of similar marks if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur.” This case was dismissed by a federal judge stating that Winfrey had fair use right to descriptively label her magazine.
In 2013, the ruling from 2011 case was vacated and the case was revived. The appeals judges overturned the lower-court rulings in Winfrey’s favor on the claims of reverse confusion and false designation of origin. They affirmed the order dismissing the claims for counterfeiting, vicarious infringement and contributory infringement.
Last year, District Court Judge Crotty said the “Own Your Power” phrase “lacks the requisite distinctiveness to be entitled to protection,” and although it is “descriptive” because it refers to Kelly-Brown’s motivational entrepreneurial services, she failed to establish “secondary meaning” with no consumer studies, media coverage or anything else that would lead sources to believe the phrase belonged to Kelly-Brown’s business. Crotty added even if the mark was protected, Kelly-Brown failed to demonstrate a likelihood of confusion.
For years this case went back and forth between the New York Federal Court and the 2nd Circuit Court, but on Friday, the 16th of September, it finally came to an end. The U.S. Court of Appeals for the Second Circuit affirmed the judgement previously handed down by the U.S. District Court for the Southern District of New York in March of 2015. The appellate panel held that the “Own Your Power” mark alone is not distinctive enough to warrant trademark protection. The panel also found that even if the mark was able to be trademarked a reasonable jury could not conclude that the mark had become exclusively associated with Kelly-Brown’s products and services. “No reasonable jury could conclude that the descriptive phrase … had acquired secondary meaning … at the time of the defendants’ alleged infringement.”
The panel further stated in the summary order, “Were we to conduct such an inquiry, the Plaintiffs’ lack of protection in the literal component of their mark would be dispositive, in this case, of the strength of their mark for purposes of this analysis, just as it would be dispositive of the similarity of the marks (as it is uncontested that the Defendants’ use of the mark was similar only to the literal, and unprotected, component of the Plaintiffs’ mark).” The phrase is “merely descriptive” and the “determination that ‘own your power’ is not on its own distinctive ends this litigation.”