Intellectual Property Attorney

Best (Or Worst) Of Trademark Infringement Cases? Village Voice Files For Injunction Over ‘Best Of’ Trademark

It seems like every magazine, website and blog features a “best ” list these days but Village Voice Media Holding LLC (“Village Voice”), owners of a number of The Village Voice print and online publications, claim that they own the “best of ” trademark and are taking the gloves off to stop alleged infringer Yelp, Inc. (“Yelp”).

According to a complaint filed in the U.S. District Court for the District of Arizona, Village Voice annually releases various “best of” publications in major cities across the United States listing and describing restaurants, entertainment and events it has “identified as the best in each category.” The publications prominently incorporate “the phrase ‘Best of [place name],” such as BEST OF MIAMI and BEST OF PHOENIX. Over the years, Village Voice has obtained federal registrations for a number of the “best of” phrases, including, BEST OF BROWARD PALM BEACH, BEST OF DALLAS, BEST OF MIAMI and BEST OF PHOENIX, among others (collectively, the “Registered Marks”). In September 2012, Village Voice discovered that Yelp was using several of its Registered Marks on web pages that featured “establishments and events” in each of the identified locations. Village Voice sent a cease and desist letter on September 18, 2012, but the dispute was not resolved and a complaint was filed October 25, 2012. The complaint alleges trademark infringement, false designation of origin and dilution under state law.

This isn’t Village Voice’s first attempt to police its Registered Marks. In 2011, Village Voice filed an action against the owners of Time Out New York (“Time Out”), a popular New York magazine, for infringing Village Voice’s BEST OF NYC registration. Specifically, Village Voice claimed Time Out had released a “spread” that “prominently” featured the phrase “Best of NYC”. In defense of the action, Time Out employed an aggressive counter strategy by filing a counterclaim seeking to cancel Village Voice’s BEST OF NYC registration. Time Out claimed the registration was subject to cancellation because it was “generic or merely descriptive for a listing of New York City’s best events and venues, and other such New York City exceptionalism.” The parties settled the lawsuit in April 2012 and the case was voluntarily dismissed. The terms of the settlement do not appear to have been publicly released.

Despite the fact that the case against Time Out was settled, it seems likely that Yelp (or any other alleged infringer Village Voice pursues) will seek to cancel Village Voice’s Registered Marks for the same reasons cited by Time Out.

The case caption is Village Voice Media Holdings LLC v. Yelp Inc., 12-cv-2285. We will update this blog as the case progresses.

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