Originally posted on the Broadcast Law Blog.
Many station owners think they can adopt any name, positioning statement or slogan for their station so long as no one else in the market is using the exact same name or slogan. That thinking is often incorrect, and can be very costly if a name is adopted and has to be changed later because it infringes on someone else's intellectual property rights. Nicknames and slogans used in station advertising or promotion are controlled by trademark law. Even a station's call sign, which must be approved by the FCC, cannot be too similar to an in-market competitor's call sign without running afoul of trademark law. You may have read about recent litigation concerning the station nicknames "Bob" and "Bob FM." In that case, there is apparent contour overlap between two separately owned stations using the same name. But trademark law can come into play even when stations are not in the same market and do not have overlapping contours.
Trademark rights can be established in one of two ways. The first station to use a name or slogan can establish priority within that station's geographic market or contour. Alternatively, one can file an application for registration of a station name or slogan at the US Patent and Trademark Office (the "PTO"), and thereby obtain nationwide rights in that name or slogan, if no one else had prior use or a prior application. Since trademark applications can be filed on an intent-to-use basis, a station can establish priority for a mark it is not yet using. This is why a trademark search is so important prior to using a mark.
Determining whether a name or slogan is available for use requires a bit of research best done by a trademark attorney. First, a "knockout" search of both the PTO database and the Internet may reveal whether anyone has nationwide rights to the term you want to use. Even if no prior application has been filed at the PTO, widespread Internet usage might also serve to establish nationwide rights. If that preliminary search reveals someone else's rights to the term you want, it may be easy to "knock out" that name as a possibility. Perhaps you know of a competitor in the market using that same name or slogan, and if so, that should be a clear signal not to use it.
If the "knockout" search does not reveal any obvious problems, it may be wise to follow that up with a "full" or "comprehensive" search conducted by a trademark search firm. Such a search may be useful, not only because it may turn up exact hits that were missed in the "knockout" search, but also because it may reveal similar marks that can be equally as troublesome. Trademark infringement is based on "confusing similarity" of marks and services, and marks can be confusingly similar even if not identical. For example, one federal court found that the call sign KISS infringed another station's use of KIIS. Even though the FCC approved these different call signs for different stations, the court found that one infringed the other as a matter of trademark law since they were pronounced the same way over the radio.
The same principles that apply to station slogans and nicknames also apply to marks and slogans used in advertising produced by broadcasters for third parties. We have written before about the dangers of using third party marks such as "Super Bowl" and "Olympics" without authorization. But some third party marks are not quite as obvious. One station prodcued a commercial using the phrase."Get ready to rumble," only to discover that this phrase was a registered mark belonging to a third party. It is best not to assume that any name or slogan is available for use, even if you are unaware of any in-market use of the same--or similar--mark (unless, of course, the mark belongs to the client for whom you are producing the spot). The best idea is to consult a trademark attorney before using any call sign, nickname or slogan for your station or before producing a spot for a station client.