Health and the City: How Close is too Close in Trademarks?

Health and the City: How Close is too Close in Trademarks?

by Michelle Kaminsky, Esq., October 2007

When Jennifer Cassetta applied for a trademark for her Manhattan fitness and martial arts center, she likely thought it was just the next simple step in establishing a name for herself.

But when Home Box Office, Inc. (HBO) got word that her business is called "Health and the City," things suddenly got a lot more complicated.

The cable company thinks Cassetta's proposed name is too close to the name of its hit series and soon-to-be feature film "Sex and the City" starring Sarah Jessica Parker; now HBO's lawyers are doing their best to hold up Cassetta's trademark process. They've filed for an extension to oppose Cassetta's application and have until November 18 to do so.

In the meantime, HBO has offered a few suggestions to Cassetta to make their opposition disappear. One would be to change her business's name to "Health in the City," but for Cassetta that would mean thousands of dollars lost as she'd have to re-market under a new name; for a similar reason, Cassetta also rejected the suggestion that she withdraw the application altogether—not to mention that she'd also lose the nearly $500 application fee.

For her part, Cassetta says the name came to her while out running one day and only later did she realize the similarity with the show that made Manolos and Cosmopolitans household names. Indeed, Cassetta has said, "Anybody can clearly see that my company has nothing to do with Carrie Bradshaw screwing up her relationships or Samantha sleeping with half of the city," she said.

Cassetta's business isn't the only one under HBO attack, though; the company has also taken issue with proposed names of other New York businesses including "Scents in the City," "Flex in the City," "Pets in the City," and "Handbags & the City." Makes one wonder, then, why "Health in the City" would be OK with HBO.

So does HBO win this one?

A trademark is a name, logo, or any other symbol that distinguishes a company or products in the marketplace. Registering a trademark prevents others from using another's business identity to market their own products.

In order to determine whether there is an infringement on the trademark, there are two tests: whether there is a "likelihood of confusion" or whether the new name "dilutes the brand" of the trademark.

It'd be difficult for HBO to argue that a health and fitness center could be confused with their show or film or even the many other products for which they've obtained a trademark including perfume, make-up, t-shirts, bags, and shot glasses—especially considering that health doesn't appear to play much of a role in the fictionalized "Sex and the City" characters whose lives revolve around sex, cigarettes, and alcohol.

Could Cassetta's "Health and the City" dilute HBO's trademark? It could be an argument, but it hardly seems likely that a fitness center operating in New York City using a logo and advertising materials that in no way resemble "Sex and the City" could effectively dilute an internationally-known phenomenon.

Right now the decision rests with HBO. If they decide to go ahead and oppose the trademark, they'll have to come up with some pretty convincing arguments against approving Cassetta's trademark application—and they just may need the help of their creative writers (who, incidentally are on strike) to do so.