2d Cir. denies most recent appeal on trademark infringement case targeting Oprah’s “O” magazine

American media personality Oprah Winfrey is well known as a talk show host but she is a entertainment and lifestyle conglomerate unto herself. Along with a 25-year run as a nationally syndicated TV host, she’s also founded a film production company, Harpo Films, has been a co-producer of the Tony Award-winning musical The Color Purple and she produces various radio, online and print properties as well.

Oprah is also the co-founder of O, The Oprah Magazine, a monthly publication marketed to an affluent female audience. As of June 2013, O had a total of 2.4 million subscribers, ranking it 19th among the top U.S. consumer magazines by subscription base according to statistics published by the Alliance for Audited Media. The publication hosts many features popular among its readers, including an influential summer reading list of fiction and nonfiction book recommendations and an annual list of “O-Ward” winners for top cosmetics and health products.

The cover of the October 2010 edition of O prominently features the words “Own Your Power” superimposed over a picture of Oprah. The use of this phrase sparked a trademark infringement case which Oprah has recently defeated on appeal. On September 16th, a panel of judges from the U.S. Court of Appeals for the Second Circuit (2d Cir.) struck down an appeal brought by a party holding trademark rights for the limited use of the phrase “Own Your Power.”

The lawsuit for trademark infringement was originally filed in July 2011 by Simone Kelly-Brown, a motivational speaker and owner of Own Your Power Communications Inc. The plaintiff targeted Oprah’s magazine, publisher Hearst Communications and various corporate sponsors for using “Own Your Power” on the magazine as well as television, social media and websites.

Kelly-Brown is the owner of one trademark on the principal register, U.S. Trademark Registration No. 3434419. It protects the use of an illustration drawing consisting of the words “own your power” drawn in light blue scripted letters. The light blue color is claimed as a feature of the mark. The trademark is registered in international trademark class 41 which includes education and entertainment services. Goods and services covered by the trademark include workshops and seminars in the field of entrepreneurship, business networking and small business matters; conducting workshops and seminars in personal awareness, self-awareness and making the transition to becoming an entrepreneur; and entertainment services such as providing live and online radio programs in the field of making a transition to entrepreneurship. The ‘419 trademark was registered in May 2008.

Although O printed “Own Your Power” on its October 2010 cover in an italicized script, Kelly-Brown’s trademark specifically claims the use of a blue-colored script in the illustration mark and O printed the phrase in white. Also, the goods and services in the trademark limit Kelly-Brown’s claims for infringement to workshops and radio programs in the field of entrepreneurship and business. Although O often covers topics of self-awareness and entrepreneurship, its magazine format is different from the workshops and radio programs for which the trademark is reserved.

Oprah and the other named defendants in the “Own Your Power” trademark case won the dismissal of the lawsuit back in March 2012 when U.S. District Judge Paul A. Crotty dismissed all federal claims in the case. Judge Crotty, however, declined to exercise judgement on either the state law or the common law claims and the case was appealed. On appeal, Crotty granted a motion for summary judgement in March 2015 filed on behalf of the defendants which ruled that the phrase was not protected by a trademark in this case.

In the most recent appeal, a judicial panel found that Kelly-Brown’s legal team was not able to show that the use of the phrase “Own Your Power” in O caused any confusion between customers of the magazine and consumers of Kelly-Brown’s workshop and radio content. The phrase itself was not distinctive and lacked independent trademark protection, the panel found.

A brief for the defendants filed last September makes the case that Oprah’s use of the phrase “Own Your Power” goes back years before Kelly-Brown filed for the illustration drawing with words mark in 2007. The brief notes Oprah’s use of the exhortation “OWN YOUR POWER!” at the end of an commencement address to the graduating seniors of Spelman College made in 1993. The speech was reprinted in a 1996 edition of Chicken Soup for the Woman’s Soul. The brief also argues that Oprah’s use of the phrase on her own television show extends as far back as 1988.

The brief included testimony from an expert witness in the English language which stated that “since at least 1981 ‘own your power’ has been a common motivational exhortation to harness or achieve mastery over one’s own power.” The defendant’s legal team also brought up several examples of the use of “Own Your Power” in advertisements for services in her business space with which the plaintiff was unfamiliar.

Oprah’s own experience with registered trademarks is fairly extensive and the media personality has consented to the use of her name in several trademarks. U.S. Trademark Registration No. 4815766 protects a standard character mark for “Oprah Winfrey Leadership Academy Foundation.” The mark is in international trademark class 36 which includes insurance, financial affairs, monetary affairs and real estate affairs. The mark covers the standard character use of “Oprah Winfrey Leadership Academy Foundation” for charitable services including for providing funding, scholarships and financial assistance for education costs. In November 2013, the U.S. Patent and Trademark Office placed U.S. Trademark Registration No. 4436801 on the principal register. It protects the use of “Oprah Winfrey Network” on goods in international trademark class 25, which includes clothing, footwear and headgear. It covers the use of the phrase “Oprah Winfrey Network,” the title of Oprah’s television station which is also known as OWN, on clothing such as shirts, pants, sweaters and T-shirts. Both of these trademarks note Oprah’s consent to register a mark using her name.

Interestingly, although Kelly-Brown’s registered trademark covers an illustration incorporating the words “own your power” into the design, there actually is a standard character mark trademark protecting the use of “Own Your Power,” but the mark covers vastly different goods and services. U.S. Trademark Registration No. 3370014 was filed in December 2006 by Real Goods Energy Tech of Hopland, CA. The trademark is in international trademark class 37 which includes building construction, repair and installation services. It protects a standard character mark which makes no claim to a particular font size, style or color. The trademark specifically covers the use of the mark related to services for the installation, maintenance and repair of solar electric systems.