A lawyer from The New York Times Company has sent a cease-and-desist letter to the marketing director at Dow Jones after a recent Journal advertisement used the same language as a recent Times ad.
“Not Just Wall Street. Every Street.” That’s the language of a new New York Times advertisement. It’s an obvious dig at The Journal, and a familiar jab as the two papers have jostled for the cheekiest ads since The Journal‘s Greater New York section launched in April.
But! On May 26, the Wall Street Journal had a house ad inside its pages, which described the Greater New York section this way: “Not Just Wall Street. Every Street.”
The folks at The Times are not pleased about this. The Observer has obtained a copy of a cease-and-desist letter that Times Company lawyer Richard Samson just sent to the senior vice president of marketing at the Dow Jones Company, Jennifer Jehn.
“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,” wrote Mr. Samson. “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.”
The Times claims that it “is the owner of a trademark application pending with the U.S. Patent and Trademark Office.”
And if The Journal doesn’t respond within a few days, there will be trouble. “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,” wrote Mr. Samson.
Here is the letter in full:
Dear. Ms. Jehn:
I represent The New York Times Company 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.