Not Fit to Print
What do you think of this demand letter from The New
York Times? And what do you think of The Wall Street Journal’s cheeky
response?
New York Times Demand Letter
Dear Ms. Jehn:
I represent The New York Times Company in trademark matters. As you know, The
Times has published the world famous newspaper The New York Times
continuously for more than one hundred years. As you also apparently know, we
have been and are currently using the catchy slogan “Not Just Wall Street. Every
Street” (the “Slogan”) in a prominent ad campaign for The Times in New York City
(see attached sample), The Times is the owner of a trademark application pending
with the U.S. Patent and Trademark Office for this Slogan. (Serial Number
85/053,547)
It has come to our attention that you deliberately used the identical Slogan
in an advertisement for The Wall Street Journal in the May 26th issue of
your publication (see attachment). After an exhausting search of our records, we
find no indication that you ever received permission to make use of our unique
and proprietary Slogan.
While we are flattered by your admiration of our marketing efforts, please
note that The Times owns the trademark rights in the Slogan and your brazen
appropriation of our intellectual property rights constitutes a willful
infringement and dilution of The Times’s rights under the Lanham Act.
Furthermore, your use of our Slogan falsely implies that The Times has
authorized or is otherwise connected with your ad campaign, an impression that
we would assume you would wish to dispel. Accordingly, we hereby demand the you
immediately cease and desist from further use of the Slogan. Please provide us
with written confirmation that you have done so within three (3) days of receipt
of this letter.
If we have not heard from you within three (3) business days of receipt of
this letter, we will have no choice but to pursue all available legal remedies.
The demands made herein shall not prejudice or waive any rights or remedies that
The Times may have in respect of the subject matter set forth herein, all of
which rights and remedies are hereby expressly reserved.
Sincerely,
Richard Samson
Wall Street Journal Response
Dear Mr. Samson:
We half-expected to hear from you. The other half thought you might have
better things to worry about.
When we saw the “catchy” phrase, we couldn’t help but think you were
referring to the launch of our Greater New York section—the whole point of which
is to cover New York beyond Wall Street.
After all, did you not have us in mind when you conceived the ad?
I won’t belabor your legal claim. Our lawyers tell us that we were within our
rights to use the tagline to compare our two offerings.
Are you seriously suggesting that New Yorkers might be confused into thinking
you were endorsing our New York section? We are not holding our breath for that
to happen.
But don’t be too concerned. We never intended to run the ad for long.
We think we’ve made our point. And to get a rise out of you is a special bonus.
Sincerely,
Jennifer Jehn
