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.
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.