A rose by any other name

A lesson in branding and trademarking

By A.J. Wagner

The Dayton Voice

The Dayton Voice

Way back in 1998 the owners of this newspaper were contacted by lawyers for the Village Voice, a nationally circulated newspaper out of New York, asking them to cease and desist in the use of the name The Dayton Voice. That’s what the Dayton City Paper was called before it changed its name to Impact Weekly before it changed its name to the Dayton City Paper.

A business’ name is a valuable commodity. Businesses will do their best to protect their name, not just from libel and slander but from being used by other businesses. I gained some familiarity with this topic back in the early ‘80s when I managed a local office for the law firm of Joel Hyatt called Hyatt Legal Services. Like Village Voice, Hyatt Hotels had taken offense at the similar nomenclature and claimed it would cause confusion for the public.

The courts will uphold exclusive use of a trademark name if another business uses it in a like or similar manner that “is likely to cause confusion, or to cause mistake, or to deceive.” The Dayton Voice was prepared to argue that no one would confuse a small weekly entertainment newspaper in Ohio with the New York weekly that was high on production values, big on investigative reporting, larger in size and catering to a totally different market. But alas, David could not find the needed rock to slay Goliath. The Dayton Voice, short on cash and, thus, lawyer power, became philosophical and decided the name change might be good. They settled with Village Voice and became Impact Weekly. So did the Bloomington Voice and the Tacoma Voice, two other small community newspapers.

Not so with the Cape Cod Voice. They refused to bend to the bullying and eventually Village Voice backed off. I wish there were a legal case that set forth the law on all of this but Village Voice never took these cases to court. They scared off The Dayton Voice and others with letters from lawyers. Cape Cod Voice refused to back down to the letters and that is where it ended.

Joel Hyatt’s case did go to court. In court, Hyatt Hotels argued, under the Illinois Anti-Dilution Act, that the name “Hyatt Legal Services” was diluting the good name of the hotel. The hotel chain sought a nationwide order requiring Hyatt Legal Services to use a different name. There was some confusion about how a nationwide order could be made when the only violation might be to an Illinois law.

As I noted earlier, the federal law protects a business name if the newer company “is likely to cause confusion, or to cause mistake, or to deceive.” This standard is at the core of the Lehman Act, an act passed by Congress and signed by the president.

The Illinois Anti-Dilution Act, however, allowed Hyatt Hotels to argue that Hyatt Legal Services was diluting its brand. The Anti-Dilution Act, passed by the Illinois Legislature and signed by the Illinois governor, came in to play because the suit was filed in a Federal District Court of Illinois where the law was in effect and where both enterprises were doing business. The Anti-Dilution Act does not concern itself with confusion or the similarity of the business but only “if the prior user can show that the mark is distinctive and that the subsequent user’s use dilutes that distinctiveness.”

Ultimately, the courts decided that the name Hyatt Legal Services was diluting the name Hyatt Hotels. But because the Anti-Dilution Act only applied to Illinois, only in Illinois would Hyatt need to change its name to J. Hyatt Legal Services — just enough to make the name personal and distinctive. The courts refused to extend the Illinois standard to the rest of the country, however, finding that the name Hyatt Legal Services was not applied to a business similar to the hotel business and not likely to cause confusion. The standard from the Lehman Act was the superior law for the remainder of the country. The court reasoned that to allow the Illinois Anti-Dilution Act to affect business in the remainder of the country would be contrary to the U.S. Constitution’s Commerce Clause, which prevents states from controlling national commerce.

All of this is to say that companies go to great lengths to protect their names. This week’s cover story about Antioch College and Antioch University Midwest is an indication of the importance of protecting a name from confusion. Yet these two entities would be very difficult to separate since they were born in the same family. Their shared use of the name shows good will and common sense if not a common “Yellow Springs voice.”

Wouldn’t that be a good name for a newspaper?

Disclaimer: The content herein is for entertainment and information only. Do not use this as a legal consultation. Every situation has different nuances that can affect the outcome and laws change without notice. If you’re in a situation that calls for legal advice, get a lawyer. You represent yourself at your own risk. The author, the Dayton City Paper and its affiliates shall have no liability stemming from your use of the information contained herein.

A.J. Wagner is an attorney with the law firm of Flanagan, Lieberman, Hoffman and Swaim at 15 W. Fourth Street in Dayton. A.J. and his firm would be glad to help you with all of your legal needs. You can reach A.J. at (937) 223-5200 or at AJWagner@DaytonCityPaper.com.

A.J. Wagner is an attorney with the law firm of Flanagan, Lieberman, Hoffman and Swaim at 15 W. Fourth Street in Dayton. A.J. and his firm would be glad to help you with all of your legal needs. You can reach A.J. at (937) 223-5200 or at AJWagner@DaytonCityPaper.com.

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