PHILLIPS LYTLE’S INTELLECTUAL PROPERTY GROUP PREVAILS IN TRADEMARK DECISION
Pittsford On-Line Retailer Retains Name Of Stylish Maternity Clothing Line
BUFFALO, N.Y., February 9, 2004 – The Intellectual Property Group of Philips Lytle LLP, one of the region’s largest law firms, successfully proved that trademarks containing merely descriptive terms, that have not acquired a secondary meaning, are not enforceable. This decision, in favor of an upscale on-line maternity boutique based in Pittsford, NY “One Cool Mama,” was made at the trial level. The court agreed, during oral arguments, that the competitor’s trademark “Hot Mama” should not have been registered. The court further cancelled the competitor’s federal trademark registrations.
“We are pleased that our client is able to retain the name and business identity they have built,” stated Peter K. Sommer, Partner and Head of The Intellectual Property Group at Phillips Lytle LLP. “The term ‘Hot Mama’ in most circles is associated with stylish and attractive women and as such, was deemed not to be distinctive because of the common colloquial meaning.”
The court granted summary judgment in favor of Phillips Lytle in this case for four key reasons:
- “One Hot Mama” is not distinctive because of the ordinary meaning of the term meaning stylish or attractive woman
- The term has been diluted by widespread third party usage
- Plaintiff used “One Hot Mama” in a descriptive sense
- “One Hot Mama” is just an expression and a popular colloquialism
Peter K. Sommer is a partner in the Buffalo office of Phillips Lytle LLP and concentrates his practice in the area of intellectual property law, including patent, trademark and copyright counseling, domestic and foreign trademark and patent prosecution, licensing, oppositions and cancellations, infringement opinions, enforcement and litigation.
Phillips Lytle is a full-service law firm with seven offices across New York State in Buffalo, Albany, Chautauqua, Garden City, New York City and Rochester. With the farthest geographic reach of any law firm in the state of New York, they are well-equipped to meet the needs of their clients.
