You Don’t Know Jack

By Mark McKenna

The Seattle Post-Intelligencer has a story about SparkNet’s attempts to enforce trademark rights in the name of a radio show format (SparkNet refers to the format of a mishmash of musical artists and styles as “Jack”). SparkNet also summarizes this style as “playing what we want” and apparently doesn’t like when other people “play what they want.” The “playing what we want” phrase seems like quite a weak mark, if it qualifies as a trademark at all. Fortunately, at least one court has injected some sanity into this story, when a magistrate judge in my former home district (the Northern District of Illinois) rejected SparkNet’s claim against Bonneville International’s use of the slogans “whatever we feel like” and “whatever we want” for one of its radio shows. Quite sensibly, the court said that this was a dispute better dealt with in the marketplace.

The more interesting aspect of this story, I think, is SparkNet’s attempt to claim the mark “Jack.” In the abstract, “Jack” has a much better chance of qualifying as a trademark since it is at least suggestive if not arbitrary as applied to radio shows. But the way I read the story, SparkNet uses “Jack” to refer to the format of its show. If that’s true, then it seems to me that “Jack” runs a real risk of being generic. If SparkNet can’t protect the format itself (and I doubt it can), and if the format can’t be easily described in some other way, then it’s very likely that “Jack” will become the common way of referring to the format.

This is a risk that anyone who creates a new paradigm has to deal with. The marketing folks want a particular term to become synonomous with that product or service, but trademark law cautions against creating true convergence between term and genre. This kind of issue comes up most often with respect to marks for products that were once subject to patent protection (think shredded wheat, or certain pharmaceuticals), and trademark lawyers have a whole bunch of rules for their clients to protect against it. But, at the end of the day, there isn’t that much that creators of new things can do about this – it’s sort of an occupational hazard.

The other interesting thing about this article is that it quotes someone from SparkNet saying, incredulously, that people in radio just don’t care about trademarks. Anecdotally, it seems to me that people choose radio stations based on the type of music they play and the personalities the station employs. Because they operate on uniqe frequencies (at least within markets), it strikes me that it’s probably true that branding really doesn’t matter much for radio stations. But when I think about it, there are probably other examples like this, and trademark law really doesn’t take account of that reality.

Hat tip, Mark Partridge