Naperville, IL Development Project Forced To Drop Name To Avoid Public Confusing It With City 1.7K Miles Away
from the under-the-bridge dept
Lots of trademark disputes are stupid. Lots of trademark disputes portray a great deal of hand-wringing that is laughable at best. And lots of trademark disputes end up being settled despite not being even remotely valid. But very few trademark disputes have to do with the naming and promoting of commercial developments when the geography that separates them is over 1,700 miles.
But that's the case in the recent news that the City of Naperville in Illinois has dropped the name of its Water Street District development due to a complaint by the city of Henderson in Nevada.
It seems the city of Henderson, Nev., “owns exclusive, nationwide rights” to use the name Water Street District, and fired off a letter to Naperville officials in 2017 after learning the city and Water Street businesses were using the same name to refer to the area where the Hotel Indigo, Sparrow Cafe, Southern Tide and other stores, restaurants and a parking deck are located, according to city documents.
“The letter asserted that the use of that phrase by the city of Naperville and by the Water Street property owner is unauthorized and violates the city of Henderson Redevelopment Agency’s trademark rights protected by registration with the U.S. Patent and Trademark Office in August of 2014,” city documents said.
This is where I remind everyone yet again that trademark law stipulates that infringement only happens in cases where there is real or potential confusion in the public as to the source of a product or an affiliation between two entities. In this case, the two locations concerned are quite literally more than 1,700 miles apart. I know this because Naperville is roughly a seven-iron away from my home, whereas the Nevada dessert is most definitely not. So what possible confusion could be had in this case? None, of course.
Now, Henderson attempts to come off as something of a reasonable good guy in all of this by allowing Naperville and the developer to still name its development Water Street District, but neither can actually, you know, tell anybody that via the normal marketing means.
While Henderson does not have an issue with Naperville’s continued use of Water Street District as part of ordinances previously approved, the settlement between the two cities and the property owner specifies neither will use Water Street District when otherwise referring to the development.
That means the phrase will not appear in newsletters, directories, maps or on goods, such as hats, pullovers, shirts, mugs, beach bags or metal key chains, city documents said.
Which is a shame, honestly. It's understandable why folks roll their eyes at this type of threat and simply cave as the easier option, but it sure would be nice to see some fight from entities so unfairly and absurdly targeted.
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Filed Under: henderson, illinois, naperville, nevada, trademark, water street district
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From what I can see based on latitude and longitude, a great circle route is only 1.5K miles between the two cities anyway... This means everyone here is using rhumb lines. You know who else uses rhumb lines? Pirates. Oh my god, blue's been right all along!
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Distance is Irrelevant
Key legal phrase here for infringement is "potential confusion in the public".
Words "potential" & "public" are very vague -- it's certainly 'possible' that some person(s) somewhere in the 'public' has the future 'potential' to confuse the two entities in dispute here.
"Think of the average American -- and realize that half of the public is dumber than that" -- George Carlin
(that is median IQ is 100)
Point is that government people frequently write dumb laws and dump them on the courts to sort out. This is a huge burden on on society and often prompts judges to legislate from the bench.
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Re: Distance is Irrelevant
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Synergy
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Henderson NV???
And how did they TM such a generic descriptive name, anyway???
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an effective dihydrogen monoxide ban would have prevented this
...which never should have been issued as everyone knows that Water Street is the main street of St. John's, Newfoundland and any other city using the same or deceptively similar names for one of its streets is likely to create public confusion. There's no water in Nevada, it's desert and thousands of miles from the Atlantic Ocean.
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You get a funny vote for the comment title alone.
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/pedantic_mode=OFF
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Geographically Challenged
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Re: Geographically Challenged
Town names are a poor example. Things like "Soho" would be better - South of Houston, referring to a district.
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Hmmmm ... More on morons
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What?
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Nevada "Dessert"
While Nevada includes Las Vegas, which has a multitude of buffets featuring numerous dessert offerings, I believe the author here meant "desert."
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