April 12, 2007

As previously reported by the Daily Dose of IP (link here and below), the Katonah Village Improvement Society (KVIS) was considering a challenge to Martha Stewart’s attempt to register the mark “KATONAH” with the USPTO. As reported by the New York Journal News (link below), the KVIS decided to do so, and yesterday it filed its formal Notice of Opposition to Stewart’s applications. According to the article, Martha Stewart Living Omnimedia officials stated that “Stewart is trying to honor the hamlet by choosing its name and that the trademark plans won't harm the community in any way,” but that the planned registrations “have upset some local residents who don't want their community name to be branded by Martha Stewart Living Omnimedia.”

KVIS filed its Notice of Opposition on April 11th, opposing the registration of the four pending KATONAH trademark applications, namely U.S. Trademark Application Serial Nos. 78727049, 78727052, 78727061, and 78727068, noting that the remaining two KATONAH applications (78727055 and 78727070) were previously abandoned. In the Opposition, KVIS notes that it was charted by the State of New York in 1886, and has used its name ever since in associate with not-for-profit services for residents in Katonah, New York. Four separate counts are provided in the Opposition, namely that (1) “Applicant’s Mark is Likely to Cause Confusion with Opposer’s mark” because the KATONAH mark “is so similar to Opposer’s KATONAH VILLAGE IMPROVEMENT SOCIETY trade name and trademark, in sight, sound, overall appearance, and commercial impression” as to cause confusion; (2) “Applicant’s Mark is Merely Descriptive of the Goods” by, in part, not serving as a source identifier; (3) “Applicant’s Mark is Merely Geographically Descriptive of the Goods,” noting that Katonah, New York, “is a well known geographic location,” and that Martha Stewart “lives in Katonah, New York and is responsible for the creation of the proposed KATONAH Mark and the products listed in the subject applications”; and (4) “Applicant’s Mark is Primarily Geographically Deceptively Misdescriptive of the Goods” because the Applicant’s goods are not from Katonah, NY, but that customers of the goods “are likely to believe that the goods originate from Katonah, New York.” I will continue to watch these applications and will report updates from time to time.

DDIP “KATONAH” Article: LINK
New York Journal News Article: LINK
KVIS Opposition: LINK

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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