By: C. Briccetti

In January of 2007, it became public that Martha Stewart Living Omnimedia (MSO) intended to trademark “Katonah” to be used for a line of furniture, paints, and other home furnishings.ⁱ Katonah is the name of a tony Westchester County hamlet of the Town of Bedford located about 40 miles north of New York City. Martha Stewart, the founder of MSO, has owned and lived in a 153-acre estate in Katonah since 2000.ⁱⁱ There was a large uproar in Katonah; residents objected to the use of their town’s name for commercial purposes, and feared it may harm local businesses.ⁱⁱⁱ Some Native Americans like the Ramapough Lenape Indian Nation also objected finding the trademark attempt offensive, as the hamlet was named after a 17th-century Indian Chief.^iv

A spokeswoman said Stewart “seeks to honor the town and the hamlet by using the word Katonah,” and a lawyer for Stewart said the trademark “will not stop Katonah residents, or anyone else, from using the name Katonah exactly as they always have.”^v These statements did not satisfy the disgruntled residents, and the Katonah Village Improvement Society (KVIS) launched a campaign called “Nobody Owns Katonah” to fight the mark,^vi and held a fundraiser on June 29, 2007 featuring live music by local musicians to raise the money needed for “research, filing fees, court fees, expenses associated with publicity, and more.”^vii KVIS, founded in 1878, is an all-volunteer community organization “which sponsors, supports, and maintains projects and programs to foster an appreciation for the history and traditions of the Village of Katonah.”^viii The group filed an opposition to the mark with the Trademark Trial and Appeal Board of the U.S. Patent and Trademarks office in April, 2007.^ix

“Nobody Owns Katonah” was part of an impressive grassroots effort to oppose the mark by Katonah residents and others interested in the cause. One local resident, Bill Tisherman, put out a satirical newsletter called “The Martometer,” with the tagline “an unofficial journal covering one large, stubborn corporation’s attempt to trademark the name of one small, feisty village.”^x The articles in the newsletter have tongue-in-cheek titles like “Katonah Braces for Life After Trademark,” and “Rumor Spreads: Martha to Preside Over Annual Church Rummage Sale,” while advertising for t-shirts with the slogans like “Katonah?: the furniture formally known as a village.”^xi When asked about his motivation to put out the newsletter, he replied, “it’s very frustrating to have been part of a process trying to get Martha Stewart’s people to engage in a dialogue and they simply shut down. This was my way to try to keep it in the public eye in an entertaining way.”^xii He was referring to a meeting in March, 2007 when Stewart addressed residents (armed with freshly baked chocolate chip cookies), which Tisherman found to be “completely one-sided. Stewart talked and had no interest in listening” to their concerns.^xiii

Another interesting grassroots opposition effort was a song called “The Katonah” by the Advance Placement Band, which is made up of two local college-age musicians.^xiv The song, while satirical in tone like The Marthometer newsletter, captures the spirit of the opposition movement with lyrics like “First we’d like to compliment your cooking skills,/ But when it comes to real estate, keep out of our grills. . . . We love your quotes and all that jazz,/ But we don’t want you to change what our town already has. . . . Hey Martha, Katonah is not for sale./ Hey Martha, sorry we didn’t post bail./ Hey Martha, if you could leave that would be nice./ Hey Martha, we’re sugar and we need no spice.”^xv

Katonah residents’ main fear was that if MSO owned the “Katonah” mark, local businesses would be burdened by having to ask permission of the corporation every time they wanted to use their town’s name.^xvi However, obtaining a trademark with a geographical indication is not a new concept: consider Philadelphia Cream Cheese, Boston Market, or Nantucket Nectars, just to name a few.^xvii So what protections are there in place for the consumer or local business owner? According to TRIPs,^xviii geographical indications are “indications which identify a good as originating in the territory of a Member . . . where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”^xix Therefore, there must be a link between the geographical indication and the good. This is the concept truly at the heart of the Katonah residents’ objection; Martha Stewart only moved to Katonah a few years ago, and the locals, who have a fierce loyalty to their town’s unique history,^xx take offense to her intentions to, in effect, “own” their town.

TRIPs goes on to say that the geographical indication may not be used in a way that “misleads the public as to the geographical origin of the good,” and that a trademark may be refused or invalidated if the examiner believes it may mislead purchasers.^xxi In MSO’s application for the mark, they wrote, “Katonah is a town in New York which serves as the inspiration for the design of the goods intended to be sold under the mark. The goods will not be manufactured or produced in Katonah.”^xxii

In the end, MSO and KVIS agreed out of court that MSO would pursue the trademark to apply only to for furniture, mirrors, pillows and chairpads, and drop applications for additional goods such as hardware, paint, lighting and home textiles.^xxiii KVIS would in return drop their opposition to MSO’s application.^xxiv The statement went on to say that the “registration of the name ‘Katonah’ as a trademark in association with [MSO’s] particular products in no way interferes with the rights of [local] businesses . . . to continue to use the name ‘Katonah’ for their stores,” and MSO “would only challenge a use of the name if a product (like furniture) were branded with the name ‘Katonah’ in a way that infringed the company’s trademark rights, which could cause confusion for consumers.”^xxv

It’s hard to say for whom this is a victory. Martha Stewart shares “fell as much as 5.6 percent on news of the accord, falling 78 cents to $12.35 in New York Stock Exchange composite trading.”^xxvi However, it doesn’t appear that the “Nobody Owns Katonah” campaign quite triumphed either. A Katonah resident who authored a protest song performed at the KVIS fundraiser, did say the settlement “seemed reasonable,” and added “the town is still the town. It’s not Marthaville. I think that the settlement is fair and in good community spirit.”^xxvii As the parties said in their press release, they were all pleased to have “resolved any misunderstandings” and “join in mutual appreciation of the Westchester County hamlet of Katonah.”^xxviii So in the end it seems it was, as Martha would say, “a good thing.”

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ⁱ See Martha Stewart Furniture with Bernhard – The Katonah Collection, http://www.bernhardt.com/marthastewartfurniture/collection.php?COL=Katonah (last visited Feb. 16, 2008); Indians Protest Use of ‘Katonah’ for Martha Stewart Product Line, NEW YORK TIMES, May 30, 2007, available at http://www.nytimes.com/2007/05/30/nyregion/30martha.html?_r=1&oref=slogin.
ⁱⁱ Indians Protest, supra note 1.
ⁱⁱⁱ Jim Fitzgerald, Settlement in Stewart Trademark Feud, NEWSVINE, Nov. 14, 2007, available at http://www.newsvine.com/_news/2007/11/14/1097238-settlement-in-stewart-trademark-feud.
^iv Id.
^v Village to Martha: ‘Nobody Owns Katonah’, WCBS NEWSRADIO 880, May 29, 2007, available at http://www.wcbs880.com/pages/515327.php?contentType=4&contentId=551980.
^vi Id.
^vii Taking Back Katonah, HUDSON VALLEY MAGAZINE, July 3, 2007, Web Feature available at http://www.hvmag.com.
^viii See Katonah Village Improvement Society, http://www.kvis.typepad.com/ (last visited Feb. 16, 2007).
^ix Katonah Village Improvement Society v. Martha Stewart Living Omnimedia Inc., 91176691, U.S. Patent and Trademark Office Trademark Trial and Appeal Board. Trademark application, KVIS opposition, and subsequent filings of both parties available at http://ttabvue.uspto.gov/ttabvue/v.
^x The Marthometer, available at http://www.themarthometer.com/ (last visited Feb. 16, 2007).
^xi Id.
^xiii Posting of Robert to Suburbarazzi Blog, http://suburbarazzi.lohudblogs.com/2007/04/06/the-man-behind-the-marthometer-speaks-since-when-does-martha-stewart-live-in-katonah/ (Apr. 6, 2007, 11:30 EST).
^xiii Id.
^xiv Advanced Placement Band, http://www.purevolume.com/advancedplacementband (last visited Feb. 16, 2007).
^xv Advanced Placement Band, http://www.purevolume.com/advancedplacementband/lyrics/1797732 (last visited Feb. 16, 2007).
^xvi Pallavi Gogoi, Katonah vs. Martha Stewart, BUSINESSWEEK, July 4, 2007, available at http://www.businessweek.com/bwdaily/dnflash/content/jul2007/db2007073_268098.htm.
^xvii Posting of Susan Gunelius to MarketingBlurg Blog, http://www.marketingblurb.com/2007/07/martha_stewarts_neighbors_rall.html (July 18, 2007).
^xviii The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) is an international agreement administered by the World Trade Organization (WTO) in 1994 that set down minimum standards, procedures and remedies for the enforcement of intellectual property rights. See TRIPs – Introduction, http://www.uspto.gov/web/offices/dcom/olia/globalip/trips.htm.
^xix Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Part II, §3, Art. 22.1, available at http://www.uspto.gov/web/offices/com/doc/uruguay/finalact.html.
^xx For a history of Katonah, see http://www.katonahny.com/AboutKatonah.html; Taking Back Katonah, supra note 7.
^xxi See TRIPs – Introduction, supra note 18; see also Trademark/Service Mark Application Help Instructions, available at http://teasplus.uspto.gov/teahelp.htm.
^xxii See Application, supra note 9.
^xxiii Press Release, Martha Stewart Living Omnimedia, Inc. and the Katonah Village Improvement Society, Joint Statement Regarding “Katonah” Trademark (Nov. 2, 2007), available at http://kvis.typepad.com/kvis/2007/11/joint-statement.html
^xxiv Press Release, supra note 23; see also Katonah: Compromise over Stewart Brand, N.Y. Times, Nov. 15, 2007, available at http://www.nytimes.com/2007/11/15/nyregion/15mbrfs-stewart.html.
^xxv Press Release, supra note 23.
^xxvi Erik Larson, Stewart Gives Up Trademark Bids in `Katonah’ Fight, BLOOMBERG.COM, Nov. 2, 2007, available at .
^xxvii Sean Gorman, Katonah trademark settlement won’t stop Martha Stewart roast, THE JOURNAL NEWS, Nov. 13, 2007, available at http://www.bloomberg.com/apps/news?pid=20601205&refer=consumer&sid=awfHxSILFE_8 .
^xxviii Press Release, supra note 23.