Naperville, IL Development Project Forced To Drop Name To Avoid Public Confusing It With City 1.7K Miles Away

Trademark

from the under-the-bridge dept

Fri, Jan 11th 2019 7:39pm — Timothy Geigner

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

24 Comments

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Mason Wheeler (profile), 11 Jan 2019 @ 12:05pm

Just a note: 1700 miles is 1.7K miles. ("17K miles away" doesn't actually exist on Earth the way we think of distances, as it's more than halfway around the planet and so we'd instead measure the smaller distance to the point in question by going the opposite direction.)
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Gary (profile), 11 Jan 2019 @ 1:49pm

Synergy
They should take this opportunity to save money on the hats and tees. They could use the same design on the merch and save printing costs!
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stderric (profile), 11 Jan 2019 @ 8:37pm

Re:
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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Christenson, 11 Jan 2019 @ 9:13pm

Henderson NV???
Isn't this the same Henderson where the cops took over a third party's house by force majeure to spy on a "criminal"???

And how did they TM such a generic descriptive name, anyway???
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carlb, 11 Jan 2019 @ 9:32pm

an effective dihydrogen monoxide ban would have prevented this
“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...”

...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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stderric (profile), 11 Jan 2019 @ 9:32pm

Re: Re:
OK, 1.7K miles must be driving distance. Still, a rhumb line between Napierville and Henderson is longer than a great circle route by... a bit. So technically, my joke is still valid because, er, common law? Something like that.
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Anonymous Coward, 11 Jan 2019 @ 10:36pm

What, is Henderson's Water Street District going to expand into other markets?
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Stephen T. Stone (profile), 12 Jan 2019 @ 2:36am

You get a funny vote for the comment title alone.
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Anonymous Coward, 12 Jan 2019 @ 4:07am

Re: Re: Re:
USPTO is a loose floozy who will give it up to anyone who asks.
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Bamboo Harvester (profile), 12 Jan 2019 @ 4:24am

Re:
Hey, so he's got a really BIG seven iron...
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madasahatter (profile), 12 Jan 2019 @ 6:04am

Geographically Challenged
The city of Henderson, NV must have some the dimmest of the dim. There is no way anyone with a couple of functioning brain cells would ever the confuse the two water districts. This is much like the several towns in the US named Princeton, Nashville, Atlanta (there is one in NY). Depending on context and location it is pretty obvious whether you are talking about 'the' Princeton, Nashville, Atlanta or one of the others.
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JoeCool (profile), 12 Jan 2019 @ 6:39am

Re:
Personally, I've always preferred hydrogen hydroxide.
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Bamboo Harvester (profile), 12 Jan 2019 @ 6:49am

Re: Geographically Challenged
It's a branding issue. They're selling "stuff" Branded with the name.

Town names are a poor example. Things like "Soho" would be better - South of Houston, referring to a district.
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Magellan, 12 Jan 2019 @ 8:48am

Distance is Irrelevant
Trademark Law says nothing about distance (no matter how calculated)

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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Glenn, 12 Jan 2019 @ 8:57am

Main Street Stations, beware!
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Pleny (the most recent), 12 Jan 2019 @ 9:18am

Hmmmm ... More on morons
The city of Portland, Maine might be considering “legal” action against the city of Portland, Or. because because the latter city deployed FIVE police officers to arrest a homeless person stealing electricity by charging a cell phone in a public building, and they did not want to be mistaken for such moronic conduct.
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Hugo S Cunningham (profile), 12 Jan 2019 @ 10:45am

Re: Re:
How about hydroxic acid?
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res (profile), 12 Jan 2019 @ 11:20am

What?
Brooklyn, Maryland watch out!
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Bamboo Harvester (profile), 12 Jan 2019 @ 11:55am

Re: Re: Re:
That and hydrogen hydroxide refer to the pH *action* of dihydrogen oxide (no mon- required) in a chemical reaction.

/pedantic_mode=OFF
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Anonymous Coward, 14 Jan 2019 @ 3:34am

It's definitely easier to cave when you'd have to justify the expense of a lawsuit to your voters, which I assume is a fairly small town. Voters who may not understand why you'd fight a million dollar lawsuit when $SCHOOL is in need of $REPAIR, or the fire department is not getting fully funded.
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Anonymous Coward, 14 Jan 2019 @ 7:41am

In Belfast, they have rebranded a development of a historic part of the city Tribeca and everyone hates it - https://www.belfasttelegraph.co.uk/news/northern-ireland/belfast-council-opposes-bid-to-name-500m-pr oject-after-new-yorks-tribeca-37689523.html
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michael, 14 Jan 2019 @ 11:56am

Nevada "Dessert"
"whereas the Nevada dessert is most definitely not."

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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Anonymous Coward, 14 Jan 2019 @ 12:04pm

Re:
Naperville is one of the richest cities in IL and has a population of ~150,000. They could absolutely afford to litigate this, if they really wanted to. I assume they didn't because the cost of paying Naperville lawyers to argue the case would so far outweigh the (probably considerable) rebranding costs that it's not even remotely worth it.
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Anonymous Coward, 14 Jan 2019 @ 8:22pm

Re: Distance is Irrelevant
Most of this country's 500,000 various regulations that rule our daily lives were put into force by single non elected individuals, usually lawyers.
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