The NYT is ordering Dow Jones (NYSE: NWS) to “cease and desist” using the slogan “Not Just Wall Street. Every Street” in its advertisements because it claims first rights to that line, according to a copy of a letter signed by the NYTCo’s attorney that paidContent obtained. The Times’ lawyer, Richard Samson, writes that the paper is the owner of a trademark application pending with the U.S. Patent and Trademark Office for this exact slogan (Serial Number 85/053,547). Representatives from Dow Jones were not available for a response to the letter, which was addressed to Jennifer Jehn, SVP of marketing, but have told paidContent they are preparing one. We will update accordingly. Update: Dow Jones declined to comment.
Both the NYT and WSJ have been plastering ads across the NYC subway cars for weeks, ever since the WSJ launched its New York section in April. And both have used ads that play on the words “Times” and “Wall St.” But this particular ad that the has drawn the NYT’s complaint ran as a house ad in the WSJ on May 26. After noting that the NYT has filed a patent for the slogan, Samson claims that after an “exhausting search of our records, we find no indication that you ever received permission to make use of our unique and proprietary Slogan.”
Use of “The Slogan,” Samson says, represents a “willful infringement and dilution” of the NYT’s rights under the Lanham Act. It also “falsely implies” that the paper has authorized or is somehow connected with the WSJ ad campaign, which seems like a bit of a stretch, but just in case, Samson helpfully states it would be “an impression that we would assume you would wish to dispel.
Playfulness aside, Samson’s letter gives Dow Jones three days to comply with the complaint or the NYT will take unspecified legal action.
Full letter is below:
RE: Infringing Use of New York Times Slogan
Dear. Ms. Jehn:
I represent The New York Times Company (NYSE: NYT) in trademark matters. As you know, The Times has published the world famous newspaper The New York Times continuously for more than one hundred years. As you also apparently know, we have been and are currently using the catchy slogan “Not Just Wall Street. Every Street” (the “Slogan”) in a prominent ad campaign for The Times in New York City (see attached sample), The Times is the owner of a trademark application pending with the U.S. Patent and Trademark Office for this Slogan. (Serial Number 85/053,547)
It has come to our attention that you deliberately used the identical Slogan in an advertisement for The Wall Street Journal in the May 26th issue of your publication (see attachment). After an exhausting search of our records, we find no indication that you ever received permission to make use of our unique and proprietary Slogan.
While we are flattered by your admiration of our marketing efforts, please note that The Times owns the trademark rights in the Slogan and your brazen appropriation of our intellectual property rights constitutes a willful infringement and dilution of The Times’s rights under the Lanham Act. Furthermore, your use of our Slogan falsely implies that The Times has authorized or is otherwise connected with your ad campaign, an impression that we would assume you would wish to dispel. Accordingly, we hereby demand the you immediately cease and desist from further use of the Slogan. Please provide us with written confirmation that you have done so within three (3) days of receipt of this letter.
If we have not heard from you within three (3) business days of receipt of this letter, we will have no choice but to pursue all available legal remedies. The demands made herein shall not prejudice or waive any rights or remedies that The Times may have in respect of the subject matter set forth herein, all of which rights and remedies are hereby expressly reserved.