Trademark dispute centers on use of the phrase.
New Times Inc. is suing Ticketmaster Online-CitySearch Inc. for trademark violation, AAN News learned recently. The suit, which was filed in February, accuses the online city guide of appropriating New Times’ ownership in the phrase “Best of Phoenix.”
According to New Times Senior Vice President Scott Spear, the dispute began last year when Ticketmaster began using the phrase “Best of Phoenix” to describe a feature identifying its top local choices. Spear said New Times’ flagship Phoenix paper has been using that same construction since 1979. According to New Times’ complaint, Ticketmaster’s use of the registered phrase “is likely to cause confusion, mistake and deception of consumers.”
“Ticketmaster is palming off its [Web] page and related goods and services as those of New Times and is creating a belief in the public that Ticketmaster is associated with or licensed by New Times,” the suit states.
Spear said the two sides met three weeks ago in U.S. District Court for the District of Arizona after New Times asked for a preliminary injunction barring Ticketmaster from using the “Best of Phoenix” terminology. A ruling has not yet been handed down.
Since 1974, when the San Francisco Bay Guardian invented the genre by publishing the first-ever “Best Of” issue, the annual city guides have emerged as lucrative ventures for most alternative weeklies. In fact, the “Best Of” generates more revenue and brand identity than any other single issue for many AAN papers.
On its Web site, Ticketmaster publishes a “Best Of” feature for 34 different cities. In at least 18 cases, they use the exact same phrase as a local alternative newspaper to identify the feature, which has led to disputes with other AAN members besides New Times. For instance, Gambit Weekly, which has been publishing a “Best of New Orleans” for 15 years, has been in contact with Ticketmaster over the use of the “Best Of” phrase. “We are in the process of attempting to resolve our differences, and for that reason I prefer not to comment,” said Gambit Weekly co-owner Clancy DuBos.
Michael Schwarz, controller of the Austin Chronicle, which has been doing a “Best of Austin” for 12 years, said he was upset when Ticketmaster started publishing its own “Best of Austin.” “We feel like these people came into our market and are using our [common law] trademark,” Schwarz said.
He added that it’s hard for smaller papers without “deep pockets” to battle a company like Ticketmaster.
While only a handful of alternative weeklies have registered their “Best Of” trademarks — including the New Times publications in Phoenix, Denver, Dallas, Houston and Miami — many have been using the phrase for more than a decade. Spear said he believes this entitles the papers to a “common law” trademark for “Best Of.”
According to Washington, D.C. trademark attorney Mitchell Stabbe, a “common law” trademark carries the same weight as one that is registered. Stabbe said that the owner of a common law mark must prove that it is valid to prevent its use by others.
When Phoenix New Times registered its “Best Of Phoenix” mark in 1997, it reported that it had been using that phrase since March 28, 1979. According to Stabbe, New Times had to convince the U.S. Patent and Trademark Office that “Best Of Phoenix” was more than just merely descriptive of the services described in the application. Since the Office ultimately approved the registration, New Times must have proved, Stabbe said, that the phrase had been used so long that it acquired a secondary meaning that made it recognizable to consumers as a product of New Times.
Spear said that in its court battle with Ticketmaster, New Times tried to prove that local citizens recognize “Best of Phoenix” as a New Times product. As evidence during the trial, New Times proffered a marketing survey it had conducted that indicated 25 percent of all people 18 to 49 years old, unaided by a multiple choice questionnaire, thought of Phoenix New Times when they heard the term “Best Of Phoenix.”
“Virtually everyone who reads our paper associates ‘Best of Phoenix’ with New Times,” Spear said. He said the Ticketmaster attorneys argued that the term “Best of Phoenix” was so generic that it had no protection under trademark law.
Ticketmaster attorney Brad Serwin did not return a phone call seeking comment. A Ticketmaster spokesman said company policy prevented him from commenting on pending litigation.
Ticketmaster has been very aggressive in protecting its own intellectual property rights. In two high-profile cases, Ticketmaster sued Microsoft and Tickets.com to prevent them from “deep linking” below the home page of the Ticketmaster Online-CitySearch Web site. While the Microsoft suit was settled out of court, the “deep linking” complaints against Tickets.com were dismissed by a Federal judge.