oprahThough David and Goliath’s combat ran brief and turned on a small stone, a trademark version of the legendary story has taken four years and it wasn’t David left standing after sheaves of paper got tossed about. The case involves Oprah, one name, one woman, and a lifetime of accomplishments to go with it.  She harnessed a descriptive phrase “Own your Power,” and began to build part of her Goliath-sized empire around it.  But Simone Kelly-Brown,  a life coach and motivational speaker, owns and runs “ownyourpower.biz.” Kelly-Brown sought and won a trademark on that phrase. She battled O for use of the words, prevailed briefly, but since has lost.

Kelly-Brown had a registered TM on “Own Your Power,” and sued Oprah, asserting a variety of causes of action. Her claims failed in a federal district court in Manhattan, but in May, 2013,  the U.S. Court of Appeals for the Second District reversed the summary judgment for Oprah on claims of TM infringement, false designation of origin, and reverse confusion claims.

When the case was remanded, U.S. District Judge Paul Crotty ruled recently that “own your own power” lacked the requisite distinctiveness to warrant protection with a mark saying, “[t]hough they may aspire to do so, plaintiffs present no evidence indicating a likelihood of creating a global media presence capable of attracting an audience of millions.” Oprah, in contrast, “made that showing by having used the phrase in good faith, in conjunction with other words and images associated with her overall brand,” and to convey a “message of self-empowerment.”

The duration and likely cost of the Oprah case, especially for Kelly-Brown, reminds that having a registered mark prospectively offers legal protections but these can require a commitment–and resources. And even these aren’t a guarantee of succ