Tag Archives: Reverse Confusion

Ninth Circuit Provides Roadmap for Reverse Confusion Claims

On July 7, 2017, the Ninth Circuit issued a decision clarifying issues related to pleading and proving reverse trademark confusion claims.

Marketquest Group, Inc. sued BIC over use of the phrase “The WRITE Pen Choice for 30 Years” based on Marketquest’s rights in the mark “The Write Choice.”  The district court granted BIC’s motion for summary judgment, holding that although there was some likelihood of confusion, further analysis was unnecessary because fair use provided a complete defense to Marketquest’s infringement claims. Continue reading

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On Remand, Southern District of New York Grants Summary Judgment for Defendant Oprah in ‘Own Your Power’ Dispute

Authors: Eleanor Atkins, Julia Anne Matheson

In the long-running dispute between the owner of a small motivational services business and Oprah Winfrey and her various companies, the Southern District of New York ruled again for defendant Winfrey, and against the registrant plaintiff, this time on summary judgment.

Plaintiff hosts a radio show, holds conferences and retreats, and writes a blog around the concept of OWN YOUR POWER. She owns a federal registration for the mark in stylized format covering, inter alia, workshops and seminars in the field of entrepreneurship, marketing, business networking, and personal awareness; and providing live and online radio programs on the topic of entrepreneurship.

The case’s history dates back to O Magazine’s prominent use, on the cover of its October 2010 issue, of the phrase OWN YOUR POWER in connection with a series of articles on self- empowerment.


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