DENVER, CO (November 9, 2012) — Village Voice Media and its successor company Voice Media Group announced today the settlement of a trademark infringement lawsuit against Yelp.
On October 25, VVM filed a civil complaint against Yelp in the United States District Court for the District of Arizona. That suit accused Yelp of trademark infringement arising from Yelp's recent redesign and use on its website of the federally registered trademarks "Best of Phoenix," "Best of Dallas," "Best of Denver," "Best of Houston," "Best of St. Louis," "Best of Miami," "Best of San Francisco," "Best of the Twin Cities," "Best of Seattle," and "Best of Broward/Palm Beach."
Moving forward, those trademarks will be the property of Voice Media Group, which announced its intent to purchase VVM's publication assets in September.
Yelp has now agreed to stop using the trademarks and has reverted to the phrase it used before this dispute arose: "Best of Yelp: [City Name]."
In exchange, the lawsuit was dismissed.
Voice Media Group has a strong economic interest in protecting its exclusive right to use these trademarks in the markets where it does business and the federal courts have upheld that legal position in the past. A similar lawsuit was brought in 2000 against Ticketmaster. In that case, the federal court affirmed the strength of the "Best Of" trademarks, and Ticketmaster ultimately ceased its use of the "Best Of" trademark. In addition, Time Out magazine was sued in 2011 for its use of "Best of NYC."
The "Best Of" marks began more than three decades ago when Phoenix New Times began using its mark for "Best of Phoenix." Since then, millions of dollars have been spent supporting these marks and establishing "Best Of" issues as highly anticipated local events. Publicity for each issue starts two to three months before publication; extensive advertising campaigns are conducted via billboards, bus boards, cab tops, radio and television advertising and of course print and web ads. "Best Of" parties draw thousands of readers and winners. Once distributed, the print issues often take up long-term residence on desks and coffee tables throughout the market as readers use them as the definitive guide to what's great about their town. And the print edition's online companion becomes a year-round reference for what to do, where to go and what to see.
Each Voice Media Group newspaper also creates and distributes special winners' plaques for display in homes, offices or places of business. Many businesses subsequently use these awards as focal points for their own marketing and advertising campaigns—such as the 100-foot-tall sign owned by the Talking Stick Casino and Resort, which stands adjacent to one of Phoenix's busiest freeways and is seen by tens of thousands of people daily.
That long "Best Of" tradition in Phoenix and other VMG markets is one reason the company's "Best Of" program has become a textbook example of what is known in the world of trademark law as "secondary meaning." According to that principle, what may appear to be a simple, common phrase can over time become intimately associated with a specific event and publication, and can therefore be trademarked. Significantly, many of these trademarks are deemed "incontestable" pursuant to federal law.
"Our newspapers' 'Best Of' issues and websites are recognized as special by readers and establishments in all of the cities in which we publish," said Scott Tobias, VMG's president and chief executive officer. "We have a great program and a great series of trademarks, and we will continue to protect our trademarks."