Oprah Wins Round Two – Trademark Infringement Case
Oprah Winfrey claimed a second victory against motivational speaker Simone Kelly-Brown in a trademark battle over the phrase “Own Your Power.” Kelly-Brown and her company, Own Your Power Communications, claimed Winfrey, and other named Defendants infringed on her trademark under both federal and state laws, and included a slew of other related claims. (Read the opinion here)
Oprah Winfrey first won this case on a motion to dismiss, but the U.S. Court of Appeals for the Second Circuit vacated the court’s order with respect to Plaintiffs’ trademark infringement, false designation of origin, and reverse confusion claims, and the case was sent back to the trial court on those issues.
Kelly-Brown has been using the phrase “Own Your Power” in various workshops and seminars for more than 10 years. She also has a valid service mark for the phrase with the United State Patent and Trademark Office (USPTO).
The court’s opinion features the stylized rendition of the mark, as well as the October 2010 issue of O, The Oprah Magazine, which had the phrase “Own Your Power” scrolled across the middle section of the cover. The phrase was used for promotions within the magazine in its October and December 2010 issues, as well as on banners at Defendants’ “first-ever owns your power event.” Defendants referred to the magazine and “Own Your Power” event on an episode of the Oprah Winfrey show in September of 2010, and related websites and social media accounts.
Plaintiffs alleged that all of these uses amounted to trademark infringement, reverse confusion, false designation of origin, and unfair competition under the Lanham Act.
The court found Plaintiffs’ arguments unavailing stating that “Own Your Power” is not sufficiently distinctive enough to be granted trademark protection. The court further stated that Plaintiffs failed to show that the phrase had gained secondary meaning, and that Plaintiffs did not prove that consumers would be confused by Winfrey’s use because the parties offer “fundamentally different services.” To be clear, the court added that even if Plaintiffs had established that there was a likelihood of confusion, the fair use defense would apply.
One aspect of the mark that the court focused on was its USPTO registration. The mark was categorized as “special form,” detailing its style and color, and included the following disclaimer: “No claim is made to the exclusive right to use own your power apart from the mark as shown.” Essentially, Plaintiffs secured protection only for the stylizing, and not the phrase itself.
This decision came as a result of a motion for summary judgment by Defendants, with the court ultimately finding that there were no genuine issues as to any material facts.