Are the “Two Globes” Worlds-Apart in Trademark Law?
By R. Emmett McAuliffe , Attorney At Law
Chair, Intellectual Property and Media Law Practice Group
Riezman Berger, P.C.
7700 Bonhomme Avenue 7th Floor
St. Louis (Clayton), Missouri 63105
Exclusive to STLMedia.net
Steve DeBellis has established a common law right to publish his monthly historical newspaper under The St. Louis Globe Democrat through simple use of the name over a period of years. As a result, he can exclude others from doing the same under the same name. But is Rob Rains’ St. Louis Globe Democrat really doing the same thing as DeBellis’? So much so that folks would be confused by which is which? This is what it will boil down to. Would you be confused? Are others “likely to be confused?” At bottom, trademark law is about consumer protection. No consumer confusion, no problem.
There are reports that DeBellis received several congratulatory calls upon the public announcement that there would be an online daily newspaper named the St. Louis Globe-Democrat. Are these calls evidence that someone would go to Rains’ website and assume that it was being put out by DeBellis? Or was it merely folks with a misapprehension about how trademark law works?
The following issues which have been raised in message board posts are actually non-issues:
- That DeBellis filed a business name in Missouri. Business names have nothing inherently to do with trademarks and the filing of a business name gets you zilch protection for your trademark.
- That Rains’ Globe filed a U.S. Trademark Application which has been approved for publication by an examiner at the trademark office. The examiner would not have known about DeBellis’ Globe. The opposition period for this application will not even start until December 1. DeBellis has plenty of time to file an opposition and can preserve his right to oppose the mark until April 1, keeping Rains in limbo until then. And in fact Rains has done him a favor because filing an application provided a cost-effective way for DeBellis to get an adjudication of his rights. Without that, DeBellis would have had to file a lawsuit in Federal Court.
- What the former owners or successors-in-interest to the old Globe Democrat think. In trademark law, it is very much “snooze you lose.” If you are no longer using it for a daily newspaper, it’s not yours anymore and you cannot stop anyone else from using it.
The name of a newspaper can only be considered a trademark if it is distinctive. In trademark law there is a spectrum of distinctiveness that ranges from fanciful (Exxon, Xerox), to arbitrary (“Apple” for computers), to suggestive (Microsoft), to descriptive (“Sharp” for televisions) to generic (aspirin).
The ironic thing is that both DeBellis’ Globe and Rains’ Globe did not choose their names in the usual arbitrary way (e.g., “The Express,” “The Messenger,” “The Herald,” etc.). They were both trying to evoke the old Globe-Democrat and profit from that remembrance. In a sense they were choosing the trademark to be descriptive of the characteristics of the old Globe (e.g. folksy, conversational, home-town-oriented, a formidable rival to the Post-Dispatch, or conservative).
Where does this leave the Post-Dispatch in all of this? It cannot be too happy about a well-funded competitor with an online-only (and free!) business model. The closing of the old Globe-Democrat was a messy affair. Their #1 competition, the Post, had a hand in it. I am sure that the Post’s owners believed that what they were getting for their money in the deal to close the Globe included the fact that the Globe would not be able to resurrect and become a competitor again. Unfortunately for the Post, as mentioned above, trademark law doesn’t work that way. But I imagine the Post’s attorneys are mulling over alternative theories.
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