Saturday, January 20, 2007

Martha Stewart Plan Trademark Katonah Collection May Not Be Legally Possible




Martha Stewart is planning to trademark a line of furniture – “Katonah Collection”.

Some resident’s of Katonah thinks this is not a good idea.


Reasons giving:

“We don’t think it’s a good idea for her to assert trademark rights over a name that’s been in use as a place name since 1852,”

“Doesn’t mind that Stewart uses the name for furniture but doesn’t understand the need to trademark it.”

“I don’t think that someone should actually own the word ‘Katonah.’ ”

Martha Stewart’s spokesperson response:

“Martha Stewart, number one, loves Katonah; number two, seeks to honor the town and the hamlet by using the word Katonah.”


Martha Stewart has associated the name Katonah also in the home building business.

KB Home and Martha Stewart Living launched a project to build 650 houses, which will come in many different variations. The homes, which KB says are "inspired" by three of Ms. Stewart's own houses in New York and Maine, have names such as “Katonah” and "Lily Pond."

Here is a link to the Katonah Model Homes

http://www.kbhome.com/martha/katonah.aspx


I was curious as to what the US Patent Office web site indicated on this point:

Under U.S. trademark law, geographic terms or signs are not registrable as trademarks if they are geographically descriptive or geographically misdescriptive of where the goods/services originate. The theory is that other producers in that area would need to be able to use a geographic term to describe where their goods/services are from and that one person should not be able to prevent others from using that term. If a term is misdescriptive for the goods/services, consumers would be mislead and/or deceived by the use of the term on goods/services that do not come from the place identified.

It would seem to me as a layperson that since the “Katonah Collection” of furniture is not made in Katonah it cannot be trademarked.

The residents of Katonah taking issue that you cannot owned the word Katonah look to be 100% correct under the US Patent laws.




4 comments:

kurt said...

WOW!! I WAS GOING TO COMMENT IN THE NEGATIVE ABOUT MARTHA STEWART USING THE GOOD NAME OF YOUR TOWN TO MAKE HERSELF EVEN RICHER! IT SEEMS THAT THE TIME IN JAIL NEVER GAVE HER TIME TO REFLECT! IF NOTHING ELESE, YOU WOULD THINK THAT SOMEONE WITH SUCH A SOILED PAST WOULD KEEP A LOW PROFILE IN THIS WORLD. AFTER I READ THE HISTORY OF THE NAME OF YOUR TOWN ONLY BEING AROUND SINCE 1852, I THINK THAT MARTHA MAY HAVE YOU BEAT! AT LEAST IN THE BEING AROUND LONGER PART! MARTHA, HOW ABOUT "LAKE ERIE COLLECTION" I'VE PURCHASED YOUR PATIO TABLE AND CHAIRS THAT I ENDED UP THROWING IN IT!

George said...

People of Katonah, you have nothing to worry about. As any trademark lawyer will tell you, just because someone registers a trademark doesn't mean they "own the word." A "trademark" is the same thing as a "brand." Ms. Stewart's company wants to sell KATONAH brand furniture or houses or whatever. She only has trademark rights in the word in connection with whatever the product is, not the word as it may be used in other contexts. So long as you don't sell your own KATONAH brand furniture or houses or whatever the company is registering as a trademark, you are free to use the word any way you want.

Someone said the following:

“Doesn’t mind that Stewart uses the name for furniture but doesn’t understand the need to trademark it.”

The person misunderstands trademark law. Using the name for furniture IS using the name as a trademark. The only way that a word can ever become a trademark is by using it (for example, as a brand name for furniture). Yes, a trademark can be registered with the U.S. Patent and Trademark Office, but it's not registering it that makes it a trademark; rather, it's USING it.

Please check out what it really means to "trademark" something before you, the good people of Katonah, fly off the handle.

I'm not affiliated with Stewart or her company in any way. I'm just a trademark lawyer who read some articles about how you people are up in arms over this and realized that perhaps too many people think a trademark is just a word. It's not. Martha Inc. using and registering KATONAH as a trademerk for furniture no more prevents you from using the name of your town than Kraft's use of PHILADELPHIA as a brand of cream cheese can prevent someone from using the name of that city in any way they wish.

jane said...

We have a firestorm going on right now, very similar to this, in Key West. We are a vacation destination known for our bed and breakfasts. One of the local inns has managed to trademark the name, Key West Bed and Breakfast, in spite of this clearly being disallowed by the trademark office because it is a generic and geographically descriptive term widely and historically used by most of the B&Bs in Key West. The owner is now seeking to bar her competing Key West B&Bs from using this term to describe their businesses! Residents of Katohah, beware ...

Kay said...

george,

Being an expert on the subject, I would love to hear your views on the limitations on usage of the Term 'Key West Bed and Breakfast" if one of about 80 Key West bed and breakfasts has somehow been granted that trademark. As jane said this is a hot topic for us right now, and any assistance is appreciated, since we all use this term to describe ourselves on our websites and throughout our marketing and advertising, particularly on the Internet?