In a follow up to our previous article, the Court of Appeals for the Second Circuit overturned a lower court's dismissal of a trademark infringement claim brought against Oprah Winfrey. The trademark owner holds a federal registration for OWN YOUR POWER for use in connection with workshops and seminars in the field of entrepreneurship, marketing, business networking, and self-awareness. The lower court had held that Oprah's use of "Own Your Power" on the cover of her magazine at an event, and on a website was not a trademark use of the phrase but instead a fair use. Oprah's use of the phrase can be found here. The Second Circuit overturned the dismissal, finding that for purposes of the motion to dismiss the trademark owner did not necessarily need to show that Oprah used the phrase as a trademark, only that it was used in commerce. (If use as a trademark was required at the preliminary stage, the plaintiff would have to show that Oprah used the term as a symbol to attract public attention.) Accordingly, the court held that the plaintiff need not plead that Oprah used the phrase as a trademark, but only that she used it in commerce. Next, the court rejected Oprah's fair use arguments, finding that Oprah may have been trying to create, through repetition across various forms of media, a similar association between her and the phrase "Own Your Power." Each of these usages of the phrase involved separate content and context, and as such, the court held that it was plausible that Oprah was attempting to build up a line of wide-ranging content all denoted by the phrase "Own Your Power." Thus, Oprah would need to prove at trial that her usage was fair.

TIP: Advertisers use of phrases as headlines or copy could be considered a trademark infringement. Trademark searches should be conducted to review headlines and key copy which will be used across several media channels.