In the latest wrinkle in the legal battle over the "playing what we want" slogan, Bonneville International Corp. has made a counterclaim against SparkNet Communications seeking to cancel the consultan

NEW YORK -- In the latest wrinkle in the legal battle over the "playing what we want" slogan, Bonneville International Corp. has made a counterclaim against SparkNet Communications seeking to cancel the consultancy's trademark on the slogan, ELW has learned.

Last month SparkNet, a joint venture between Vancouver-based consultant Pat Bohn and Nashville-based consultant Garry Wall, sued Bonneville in the U.S. District Court in Chicago for infringing its trademark. SparkNet has licensed the trademark to 15 stations in the United States, including Infinity outlets in New York, Los Angeles and Dallas.

Bonneville is using variations of the "playing what we want" slogan on WTMX (the Mix) Chicago, KKLT (the Peak) Phoenix, WARH (the Arch) St. Louis, and KMAX (the Max) San Francisco. The Mix Web site displays the slogan, "Today's new music... and whatever we want." The Peak and the Arch use "70's, 80's... whatever we want." In San Francisco, it's "70s, 80s, whatever we feel like!"

SparkNet contends that it and its licensees have used the trademark in the United States since May 1, 2001, and that the Bonneville slogans are so similar "in sight, sound and meaning that listener confusion is inevitable." By misrepresenting its programming "as the authentic 'playing what we want' product," Bonneville is usurping SparkNet's "opportunity to maximize the success of its product" in those markets, the suit states.

Quinn Emmanuel Urquhart Oliver & Hedges attorney David Quinto tells ELW that Bonneville's counterclaim contends that the slogan is "descriptive." Permitting its continued trademark registration is akin to "allowing a party to monopolize the English language," he says.

There are numerous stations across the country that claim to play what they want -- in one way or another, Quinto says. SparkNet is seeking to extend its protection beyond the precise words in its trademark to encompass similar expressions, he claims.

After the U.S. Trademark Office registered the mark to SparkNet, six other parties have filed applications to register variations of the slogan, Quinto added.

In April, SparkNet sued Fisher Communications for infringing use of the trademark on KPLZ Seattle. The station subsequently dropped the slogan.