Should FOX NEWS be allowed to trademark the term "Fair and Balanced?"

Those damn liberals are controlling OUR media. Hurrumph! Happy now?

 

The funniest part of it all is that the lawsuit actually helps Franken sell more books!

"Thanks FOX," Franken must be thinking, "for paying for all that free publicity!"

 

I agree, I think I just might buy this book.

 

Actually, FOX is completely right to at least file the suit? Why?

Because it is a trademark, not a copyright. Copyrights have expiration dates to them (currently set at 95 years or life of the author plus 70). However, trademarks last only as long as they are defended by their owner.

If a company allows people to use their trademarked term in a general fashion, then it is diluted and they lose that trademark. That is why you will see companies suing over any close resemblence to a trademarked phrase. Xerox has only kept its trademark because it has vigorously defended it. Coke does the same (even though some parts of the country use it as a generic term, companies that do so get sued).

If FOX does not file such a suit to defend its trademark, then it can become a generic term and their competitors can use it to minimize the brand name of FOX, possible promoting confusion.

Now, legally there are two possible outcomes:

1) "Fair and Balanced" is upheld as a valid trademark in the media industry. It has to be removed from the book and/or royalties/damages must be paid to FOX.

2) "Fair and Balanced" is ruled to be a generic term and the trademark is nullified.

Kimball Kinnison

 

Bah, do you really think this is a smart move for FOX either way? It's nothing but bad publicity.

And again, it's parodying FOX News, so I guess that means that the 1st amendment isn't as strong as I thought if this goes through.

 

I doubt you'd be saying the same thing were the situation reversed, OWM.

 

^ See, told you guys that'd happen!


E_S

 

Bah, do you really think this is a smart move for FOX either way? It's nothing but bad publicity.

OWM, as a law student, you should know how to go and research this for yourself. Because FOX has been granted a trademark on "Fair and Balanced", they have to vigorously defend it or else they will lose it. If they don't defend it (by suing their competetors when they use it or something similar), then it can be invalidated regardless of the merit of either side.

For example, Microsoft is currently in court with the company Lindows.com over their name. Lindows sells LindowsOS, a distribution of Linux. Microsoft holds a trademark on the term "Windows" in the computer industry. Microsoft has been losing their case for trademark infringement against Lindows because Lindows has been showing innumerable products that incorporated the term into their names or literature without opposition from Microsoft. Because Microsoft did not vigorously defend against infringement before, it now stands to lose the Windows mark (allowing other companies to release "Apple Windows", "Linux Windows", or even "Joe's Windows").

Trademark is not copyright or patent. Both of those are protected by law whether or not the owner defends them because they are for a limited time. Trademarks are indefinite as long as they are constantly defended.

FOX has no choice in this matter, if they wish to keep their trademark and keep their competetors from being able to coopt the brand name they have developed with it. They must sue or they will lose it.

Kimball Kinnison

 

Kimball, the reason those trademarks are defended is because the companies don't want lesser companies posing under their trademarks and slogans selling products.

The reason people sue is because like with the Windows example they don't want LindowsOS trading in on all of the Microsoft advertising.

FOX NEWS has no worries about people mistaking Al Franken's book as a FOX NEWS book. In fact, however, that's part of their weak case, that Franken is trying to fool people into thinking he's associated with FOX NEWS.

Like I said, they don't have the greatest case, (like Spike Lee didn't have a great case ), and all this will result in is BAD publicity for FOX and GOOD FREE publicity for Franken, at FOX News's expense.

 

The reason people sue is because like with the Windows example they don't want LindowsOS trading in on all of the Microsoft advertising.

However, because Microsoft has allowed Windows to become a generic term, they stand to lose the trademark on Windows. Why? Because they did not defend it for so long. (Also, there is significant evidence that "windows" was already a generic term in the computer industry at the time Microsoft released version 1.0.)

The issue to be considered here is twofold:

1) Was "Fair and Balanced" a generic term in the news media industry before FOX started using it? If it was, then it should never have been issued trademark protection. (For example, Microsoft was denied trademark status for Windows several times because it was a generic term. It was only after Microsoft struck a deal with Borland to get them to withdraw their complaint against the term that it was approved.)

2) If #1 shows that it is still a valid trademark, we must then as if Al Franken's use of the mark is meant to encourage confusion with or dilution of FOX's valid trademark. Please note that there is no "fair use" defense for trademarks, only for copyrights. Parody is not a valid defense under trademark law. If his use of "Fair and Balanced" was meant to piggyback on FOX's use of their trademark, he is liable for it.

FOX really has no choice unless they choose to abandon the trademark that they have invested 7 years into building up. They have to sue to defend it. That is the way the trademark system works.

Kimball Kinnison

 

I'm fair and balanced, just look at my sig, see, if I said it it must be true, righto?

And no, I look nothing like a fox.

 

Kimball, there are thousands of software companies, there are thousands of computer companies, and sometimes, making sure your trademark is protected makes a difference and is worth it.

FOX NEWS? Are you kidding me? What in the world do they have to worry about? That CNN is going to start claiming to be "Fair and Balanced?"

Like I said, it's just not worth the cost and the bad publicity.

 

FOX NEWS? Are you kidding me? What in the world do they have to worry about? That CNN is going to start claiming to be "Fair and Balanced?"

Go read the law on this one. It's found in Title 15 Chapter 22. Looking at section 1064, it says:

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:

...

At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

If FOX does not contest it, then they have provided the basis for others to claim dilution because they have abandoned it (by not defending it).

FOX has invested years and millions of dollars into developing this trademark. They cannot afford to not defend it in this case. If they didn't, then it would allow others (current or future competitors) to take advantage of their marketing efforts.

As long as they maintain a good faith effort to defend their trademark, it is secure for them. However, once they stop doing that (such as allowing this book to be published unchallenged), they open the doors to allow others to strip even more of their protections away.

That's how trademark law works.

Kimball Kinnison

 

Kimball, as much as your newfound love of legal research interests me, I think you are missing the point.

Is Fox News in any real danger of having Fair and Balanced usurped? And if so, by whom?

Like I said, otherwise, this is just bad PR for them and GOOD PR for Franken.

 

Again with the hilarity!

The very fact that FOXNEWS is fighting for the trademark of "Fair and Balanced" tells me that they are in fact NOT fair and Balanced.

I mean, C'mon! Unless Fair and Balanced is the name of a program on FOXNEWS, this is beyond all reason to think "Fair and Balanced" is trademarkable.

"McDonald's" it trademarked, but is "Over N million served"? uh.... no.

Did CNN trademark James Earl Jones' "This... is CNN"? Uh.... no.

But hey, this is America (tm), Home of the Brave (tm), Land of the Free (tm), where news of Shock and Awe (tm) is Fair and Balanced (tm), seen right after Must See TV (tm).

 

The "No such thing as bad publicity" works in the favor of FOX News as well, and they have far more of a, shall we say, "sustainablity" than Franken does. Remember Franken's last book got publicity for its title as well, yet it dropped off the face of the planet all the same.

In a month no one will remember who Franken is, except the usual "Republicans are Satan himself" white knuckle petty hatred liberals, of which Franken is a member.

 

Kimball, as much as your newfound love of legal research interests me, I think you are missing the point.

I've always been interested and fairly conversant on Intellectual Property laws. It's something I have to deal with regularly relating to one of my hobbies, Open Source Software.

And it is you who are missing the point. I will explain in a moment.

Is Fox News in any real danger of having Fair and Balanced usurped? And if so, by whom?

Whether they are in immediate or even potential danger of having the trademark usurped is irrelevant. As long as they defend it, it cannot be completely taken from them. If they stop defending it in any way once they are informed of possible infringements, they run the risk that it could serve as the basis for the mark to be made generic in the future.

You can go and ask any of your professors in Intellectual Property on that issue, and I recommend that you do. That is part of the very basis of trademark law.

It may be bad PR, but it is necessary IP law.

The very fact that FOXNEWS is fighting for the trademark of "Fair and Balanced" tells me that they are in fact NOT fair and Balanced.

I mean, C'mon! Unless Fair and Balanced is the name of a program on FOXNEWS, this is beyond all reason to think "Fair and Balanced" is trademarkable.

Subtitles or slogans are also subject to trademark laws. I have infront of me right now a bottle of Gatorade(R) that says, as a slogan, "REHYDRATE REPLENISH REFUEL TM". As long as they defend that within their market it is their trademark (unless it is shown to be a generic name/phrase in the market).

Regarding your examples:

"McDonald's" it trademarked, but is "Over N million served"? uh.... no.

That is because the "Billions and Billions Served" is a generic phrase used by many restaurants (by giving the number served). Such things are not trademarkable.

Did CNN trademark James Earl Jones' "This... is CNN"? Uh.... no.

CNN is a registered trademark. Adding "This is" (a generic phrase for identification in English) does nothing to change that. The phrase "This is __________" is a generic phrase in broadcasting to identify the station, and so cannot be trademarked.

But hey, this is America (tm), Home of the Brave (tm), Land of the Free (tm), where news of Shock and Awe (tm) is Fair and Balanced (tm), seen right after Must See TV (tm).

Must See TV is a trademark of NBC. It is subject to the same protections as any other trademark. It has come to be identified with NBC's evening lineup.

I disagree with a lot of things in Intellectual Property law, but those are the realities of how it currently stands.

Kimball Kinnison

 

In a word:
"It's iditotic (tm)."

 

EDIT: K_K answered my CNN post...But, isn't CNN's opening fanfare and voiceover trademarked?

I remember CNN suing another news network because it tried a similar opening tag, but without James Earl Jone's voice..

I'll see if I can dig it up, because I'm slighty rusting on the details..

Some others:

"you deserve a break today" McDonald's Tm
"Have it your way" Burger King Tm
"Always Coca-cola" Coke Tm
"The Fresh Alternative, Sandwitch Artist"
Subway Tm's
"Your Potential" Microsoft Tm

I'm sure there are thousands more ordinary sayings that have been trademarked..

So, Fox News isn't doing anything out of the ordinary by trademarking its slogan, or trying to cover anything up. It is just the nature of business..

 

Kimball, saying I've missed the point in retort to me saying YOU'VE missed the point is just childish.

You didn't even address my point even though you reprinted it. Believe you me, although I have little interest in Intellecutal Property Law (it's the only legal field that REQUIRES an engineering college background, or that REQUIRES any background for that matter), but I understood what you are saying from the get go.

Let me be clear. I understand your point about Trademarks. I understand the need to defend them, even sometimes more frivilous infringements in order to protect future works. I, however, don't believe it's necessary to persecute Franken to maintain the "Fair and Balanced" trademark. Allowing one humorist novel to get away with putting it the title doesn't make the term generic. I could see your point if this was some new network, or if it was some small newspaper or newsmagazine, but one single humor book doesn't seem to be worth it, at least to me. And the fact is, by bringing this kind of attention to it, it dilutes the impact of "FAIR AND BALANCED" anyways, bringing more attention to what a joke that slogan is.

But like I said, the MAIN point of holding on to and protecting your trademark is to protect your name. I am having trouble finding the appropraite words here. However, the reason trademarks are so well gaurde is because it becomes part of the companies image, the way it sells itself, it's marketing. So when someone rips off the trademark, they are banking on and abusing the companies good name and the use of the trademark is intended to associate the tortfeasor with the company rightfully holding the trademark.

And sure, there are other reasons. But what I am saying, what you can't seem to understand, is that I am questioning whether or not this is WORTH it. What does Fox News have to gain by this? NOTHING. AL Franken is not a news competetor with FOX, and there is ZERO chance that someone will buy Franken's book on the mistaken assumption that he is connected with FOX NEWS.

What I am asking is why is this worth Fox News' time? Someone earlier hit the head on the nail, they are probably pissed about getting made fun of and suing for trademark violation is easier than suing a humorist for libel or slander.

Essentially, Fox News may have a legal claim to 'fair and balanced.' However, they have little to gain and much more to lose by pursuing this.

 

Let me be clear. I understand your point about Trademarks. I understand the need to defend them, even sometimes more frivilous infringements in order to protect future works. I, however, don't believe it's necessary to persecute Franken to maintain the "Fair and Balanced" trademark.

However, almost any IP attorney specializing in trademarks would disagree with you on this. At the very least, they could stand to lose the trademark protection on their line of books that they offer. Ultimately they have to file suit in order to escape any claims that they have abandoned their trademark.

Most trademark suits never reach court. Instead they get settled or a misuderstanding is corrected. Through trademark law, if they don't defend it in 100% good faith (going after every case of possible infringement they know of), they stand to lose the trademark.

Allowing one humorist novel to get away with putting it the title doesn't make the term generic. I could see your point if this was some new network, or if it was some small newspaper or newsmagazine, but one single humor book doesn't seem to be worth it, at least to me. And the fact is, by bringing this kind of attention to it, it dilutes the impact of "FAIR AND BALANCED" anyways, bringing more attention to what a joke that slogan is.

However, while allowing one novel to get away with it wouldn't make it generic, it still dilutes the brand name. A trademark holder needs to fight all dilution of the brand name in order to protect the mark, even when it generates bad press for the company.

But like I said, the MAIN point of holding on to and protecting your trademark is to protect your name. I am having trouble finding the appropraite words here. However, the reason trademarks are so well gaurde is because it becomes part of the companies image, the way it sells itself, it's marketing. So when someone rips off the trademark, they are banking on and abusing the companies good name and the use of the trademark is intended to associate the tortfeasor with the company rightfully holding the trademark.

But by filing suit, they are protecting the marketing image that they have built up, at least in the legal sense. It might be bad publicity for them, but they have put millions (possibly billions by now) of dollars into building up that brand name and identity, centered around that phrase. They need to protect that investment. That is the purpose of trademark law, more than anything. It protects the investment of one company from being hijacked by another company.

What does Fox News have to gain by this? NOTHING. AL Franken is not a news competetor with FOX, and there is ZERO chance that someone will buy Franken's book on the mistaken assumption that he is connected with FOX NEWS.

What I am asking is why is this worth Fox News' time? Someone earlier hit the head on the nail, they are probably pissed about getting made fun of and suing for trademark violation is easier than suing a humorist for libel or slander.

What do they have to gain? Legal protection of their trademark and a lesser chance to have it infringed in the future in the same way. Why is it worth their time? Because they have invested a lot of time and money into that trademark and other people should not be allowed to profit from it.

I will add one caveat to that. If it can be shown that "Fair and Balanced" is in fact a generic phrase in the news media, then FOX should lose the case and their trademark. Choosing a generic phrase as a trademark is done at the owner's risk. However, if it is a valid trademark, they should be allowed to protect it.

Kimball Kinnison

 

It's my understanding that if FOX wins, nothing else can ever be called "fair and balanced" without infringing upon FOX's hold on the trademark.

Ironically, then, the only thing that CAN be "called" fair and balanced is the one thing that really is NOT fair and balanced. Everything else that claims to be fair and balanced will be persecuted... er... prosecuted to the full extent of trademark laws.

Even if Fox wins, they'll lose.

 

Kimball, again, it's not about whether they have a case, I already said that they do.

What I am saying is that you can't just look at one isolated event of the law. You can't just look at trademarking the name, you have to look at the long term interests and the goals of the company. Do they want to not have their trademark infringed? Sure. But is THIS the case to go about making it so? NO.

 

What I am saying is that you can't just look at one isolated event of the law. You can't just look at trademarking the name, you have to look at the long term interests and the goals of the company. Do they want to not have their trademark infringed? Sure. But is THIS the case to go about making it so? NO.

And FOX News has decided that protecting their multi-million dollar investment in their trademark is more important than the negative publicity generated. They obviously feel that it is more in line with the long-term interests of the company than the dilution of their trademark would be.

I should also point out that my posts have mostly been targeted towards answering the question you posed in the title. Should they be allowed to trademark the phrase? If it is not a generic term in their industry, the answer is unequivocably "Yes". Once they have that trademark and have invested so much in it, it is up to them to decide to defend it or not.

What is the issue you want discussed here?

Is this supposed to be a rant about FOX News? If so, then I'm inclined to lock this thread and direct you to the JCC for that.

Is this supposed to discuss how wise it is to defend your trademark in this sort of case? In which case, the trademark law and the legal and economic effects of dilution are very applicable.

Is it the principle of trademarking certain phrases? If so then trademark law is again vital to the discussion.

Which is it?

Kimball Kinnison

 

It's my understanding that if FOX wins, nothing else can ever be called "fair and balanced" without infringing upon FOX's hold on the trademark.

That is incorrect. Trademark only applies within a certain market.

For example, Apple Computers hold a trademark on Apple. However, Apple Music (one of the record companies for the Beatles) also holds a trademark on the name Apple. How does that work? Because they are in different markets or industries.

I could go and start a doll furniture line called "Microsoft" and Bill Gates could do nothing about it as long as I am not competing against him in the market.

If FOX wins, it only means that no one else can use the phrase "Fair and Balanced" to advertise another news media related product.

Kimball Kinnison