Local Publishers Must Protect Their Brand

Local Canton advertiser Papa Ads, Inc.learned that hard way that its iShopStark.com did not have a strong enough brand name to protect itself against the upstart “StopNStark.com,” a federal court ruled in Ohio on June 13, 2012.

Brand names act like adjectives. They tie the source of the product with the provider of goods. For example, think, “Tide” brand detergent, “Honda” brand cars or “BMW” brand cars. Names such as Honda and BMW help consumers distinguish one type of automobile made by one manufacturer compared to another. When you use your brand name, you want customers to think of you as the source of the product, not a competitor.

Papa Ads, Inc. launched “iShopStark.com” in 2007 in Canton, Ohio.  It offers product reviews, price comparisons, and coupons in the Stark County metro area. In 2010, Gatehouse Media, owner of Copley Ohio Newspapers, launched ShopNStark.com in the same area, offering the same services as iShopStark.
Papa Ads sued Copley, claiming that the new site infringes Papa Ads’ brand name and is causing confusion among the public. State and federal laws protect businesses’ brands when another business uses a similar brand name to confuse and poach customers. Papa Ads never registered its trademark with the United States Trademark Office. Papa Ad filed under the federal Lanham Act, which protects businesses against the unfair deceptive trade practices against other business that may use a similar brand name to confuse the public for similar goods or services.

The United States Court of Appeals in Cincinnati ruled that Papa Ad's iShopStark brand was not distinctive enough to prevent Copley from entering into the same hyperlocal ad space with its “ShopNStark” name.

The Court of Appeals noted that Papa Ad’s “iShopStark” was associated with a geographic area, namely, Stark County, Ohio. Copley’s use of ShopNStark similarly described shopping information for those located in Stark County. Papa Ads did not acquire a “secondary meaning” with its users, which the court observed "no longer causes the public to associate the goods with a particular place but to associate the goods with a particular source. ” 

Local media operators must get consumers to associate their brands with them, and not merely emphasize that it is a site focused on a geographic area.Steps media operators can take include strong branding on their sites (including the use of a logo) and strong promotions about their brands.