See What Attorney Sam Brown Can Do For You . . . And the Reaction From UPS
By: DEAN R. KARAU
United Parcel Service, founded in 1907, has grown into a $42.6 billion global corporation, the world’s largest package delivery company. UPS does business in more than 200 countries and territories worldwide.
UPS began using the color brown in connection with its business in 1916. In 2002, UPS launched a new $45 million advertising campaign centered on the phrase, “What Can Brown Do For You,” and obtained a U.S. trademark registration for the phrase.
Samuel Z. Brown is a New Jersey attorney whose firm provides real estate & land use, personal injury, and general litigation legal services. Brown has been cleverly using his name in advertising, including on his Web site:
Attorney Brown was too clever for UPS, which commenced a lawsuit in federal district court in New York. In the suit, UPS is asking for an order forcing Brown to quit using “See What Brown Can Do For You,” “See What Brown Can Find For You,” and other phrases or words that are “confusingly similar to any [of UPS’s] Brown marks in advertising or as part of his corporate or trade name, domain names, Web sites, or otherwise in connection with [Brown’s] services.“
Is there really any likelihood of confusion? While Attorney Brown clearly is using phrases close to UPS’s registered phrase, his legal services and UPS’s delivery services are clearly different, marketed in entirely different channels of trade to entirely different classes of consumers. Trademark law is supposed to reflect the common sense view of the consumer of goods and services, and it is hard to believe that someone seeing Brown’s website will mistakenly call him for delivery services or think he is affiliated with UPS, or mistakenly call UPS for legal services.
Is there any trademark dilution? Famous marks are entitled to protection beyond the harm caused by confusion. Owners of legally famous marks (marks well-known among the general public) can stop even non-confusing use, based on the idea that such marks can be tarnished from use by anyone other than the owner. However, UPS must prove that its “What Can Brown Do For You” mark is famous as a predicate step in its attempt to stop Attorney Brown. The Ninth Circuit Court of Appeals discussed fame this way:
“In short, for purposes of [the Lanham Act’s dilution section], a mark usually will achieve broad-based fame only if a large portion of the general consuming public recognizes that mark. Put another way, . . . the mark must be a household name.”
Many commentators suggest that when in doubt, courts should avoid classifying a mark as famous.
Attorney Brown is still using his domain name and the phrases “See What Brown Can Do For You” and “See What Brown Can Find For You,” so it looks like he may be taking a stand and hoping that the court has its doubts.