Lump of Coal for the Pittsburgh Downtown Partnership

Comes word that the Pittsburgh Downtown Partnership sending out ceiase-and-desist letters to enforce its registered trademark in the phrase, "Light Up Night." [The original version of this post, just a couple of hours ago, referred to the City rather than the PDP. Sorry.] As Johnny Mac might say, you cannot be serious.

Yes: The PDP owns a trademark registration on that phrase. According to the Trademark Office, the PDP claims a first use in commerce in 1960. The application to register the trademark was filed in 2001.

So, two thoughts:

First, if the mark was first used in 1960 but the application to register wasn't filed until 2001, it's entirely plausible - even likely! - that the phrase became generic in the meantime. Look around the Internet alone: There are "Light Up Night" celebrations all over the world, not just all around Western Pennsylvania. And if the phrase is generic, then the trademark is invalid - no matter what the Trademark Office might say.

Second, even if small towns with "Light Up Nights" don't have the cojones or dollars to spend fighting a heartless and possibly meritless trademark threat, then they should change the names of their own celebrations as minimally as possible. "Light Up Night" can become "Light Up the Night," which is almost certain to be noninfringing. That's not legal advice. But think about it: "Light Up the Night" simply describes what's happening; it doesn't (and, I think, cannot) signal who is responsible for the celebration - and that kind of signal is key to any trademark case.

And a bonus: Just because the Pittsburgh Downtown Partnership owns a trademark in the phrase "Light Up Night," the PDP does not own the phrase "Light Up Night." Trademark Law 101 says: Infringement of a trademark requires a finding of a "likelihood of confusion" - in other words, that some meaningful number of people would think that the PDP is somehow affiliated with, produces, or sponsors "Light Up Night" in Mt. Lebanon, or Uniontown, or wherever. Is that really going to be true? I doubt it. (The problem is that defending yourself against that allegation is really expensive and time consuming.) Trademark Law 102 says: "Dilution" of a trademark requires a finding that the mark is "famous" -- nationally, not locally. And "Light Up Night" almost certainly fails that test.

Send your lumps of coal to the PDP, with cards that say, "Humbug."

Update: The details of this story fascinate me, largely because I usually flinch at claims like the PDP's argument that the 2009 Light Up Night was its 49th in a row. (1960 to 2009, right?) I'm also curious about the PDP's representing to the Trademark Office that the first use of the mark in commerce was 1960.

The history tells a more complicated story. Yes, the first light up night was held in 1960, but it wasn't sponsored by the Pittsburgh Downtown Partnership. The PDP wasn't organized until 1994. The 1960 event was sponsored by the Golden Triangle Association, KDKA and the Building Owners and Managers Association. (I'm relying on some history offered by the PDP itself.) In trademark terms, that matters: The PDP can succeed to the rights to the trademark ("Light Up Night") but only if rights to the mark were transferred along with what trademark law refers to as "goodwill" - other aspects of the operations of the GTA, KDKA, or the BOMA. Maybe those rights were transferred properly (for example, the PDP and the Golden Triangle Association "merged" in 1996, but a merger by itself doesn't tell us a lot -- and the BOMA and KDKA still exist), but someone could challenge the PDP to dig them up. If the rights weren't properly transferred to the PDP, then the PDP's priority claim to the trademark would date from 1994 at most. Any city or town that used "Light Up Night" before 1994 would be in the clear, and any city or town that used "Light Up Night" in Western PA before 1994 would have a plausible argument that the PDP was forever barred from claiming that its use was first here -- and that would cause a problem for PDP's trademark claims against anyone in Western PA.

In addition, the Golden Triangle Association itself suspended Light Up Night for "nearly a decade" during the 1970s, on account (I believe) of the energy crisis. (Thanks to Google's archive of the Pittsburgh Post-Gazette, for Nov. 13, 1989 and a story by a young writer named Diana Nelson Jones [the second link goes to DNJ's City Walkabout blog at the PG].) Again, in trademark terms, that matters: Any city or town that used "Light Up Night" during the 1970s hiatus (admittedly, given the energy crisis, this would be a stretch) might be on safe ground today and, as with the management transition described above, might be able to defeat the argument that the PDP's use (stretched back to 1960 with the aid of some corporate sleight-of-hand) was first.

I went to the trouble of digging up some of this material partly because it struck me, as it likely strikes a lot of people, that the PDP is overreaching here. Yet many cities and towns that receive the PDP's letters will reflexively submit to their claims, and will submit quickly. That happens a lot in trademark cases and in other IP cases. And so I dug it up and posted it here partly because it is important to remind people that IP rights are not self-evidently valid. Even if someone claims that they "own" something (an invention, something they created and "copyrighted" [copyright is not a verb, by the way], a phrase or logo), it is still right and fair to question whether that's true. Is the thing capable of being owned? Are the rights valid? Do the rights apply? Or is this a case where genuine and legitimate public interest is being squashed for private profit?