Check out the latest update in Martha’s battle with Katonah here: http://www.foxnews.com/story/0,2933,276375,00.html
What hath Martha wrought? In defense of its very identity, the Katonah Village Improvement Society is challenging Martha Stewart’s application to trademark the “Katonah” name for her new furniture line. To help you understand this epic “battle of the quaint,” we sat down with Pace University Law School Intellectual Property Professor Horace Anderson.
Anderson explains that Martha’s motivation in trademarking the name “Katonah” probably is not to keep locals from using the name for their stores, but rather is to keep larger national chains from creating knockoff merchandise under the “Katonah” name. “There has to be a likelihood of confusion in the marketplace for a person’s use to violate a trademark” explains Anderson, “so a store that’s been around for 100 years or a local store like the ‘Katonah Butcher Shop’ would probably be able to continue to use the name.” Town residents are not pacified by these assurances. “Unsurprisingly, the people of Katonah are not happy about someone claiming trademark rights in a name in which they have such a huge stake” Anderson observes.
But what about the fact that the word “Katonah” is a place name? Anderson explains that “generally, you can get trademark rights in place names, such as the ‘Nantucket’ in Nantucket Nectars, as long as you are not merely describing where the porduct is from or being deceptive about where it is produced.” Anderson clarifies that “when a company is using a place name simply to conjure up images of a lifestyle, it often is allowable.”
So will Martha win her suit? It’s unclear, but “Katonah” furniture could very well be coming soon to a store near you.
Professor Hoarace Anderson teaches intellectual property at the Pace Universty School of Law. He previously practiced at White & Case LLP where he focussed on intellectual property, privacy, data protection, the internet, and media and technology law. He has a J.D. from the University of Pennsylvania Law School, and a B.S. in Economics with a concentration in Finance from the Wharton School of the University of Pennsylvania.