Bonneville Seeks To Cancel SparkNet Trademark

There's a new wrinkle in the legal battle over the "Jack" format slogan "playing what we want." Bonneville International Corp. plans to file a counterclaim against SparkNet Communications, the holder of the U.S. rights to the federally trademarked slogan, seeking to cancel the consultancy's trademark, Billboard.biz has learned.

The motion is expected to be filed today in U.S. District Court in Chicago, the same venue where SparkNet, a joint venture between Vancouver-based consultant Pat Bohn and Nashville-based consultant Garry Wall, sued Bonneville in May for infringing its trademark on stations in St. Louis, Phoenix, Chicago and San Francisco.

Quinn Emmanuel Urquhart Oliver & Hedges attorney David Quinto tells Billboard.biz that Bonneville's counterclaim will argue that the slogan is "descriptive" and permitting its continued trademark registration is akin to "allowing a party to monopolize the English language."

In the wake of the Jack format explosion, 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, Quinto claims.

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

On June 8, SparkNet filed a motion for a preliminary injunction ordering Bonneville to stop using the slogan. The consultancy has licensed the trademark to 15 Jack stations in the U.S., including Infinity outlets in New York, Los Angeles and Dallas. In April, the company sued Fisher Communications for infringing use of the trademark on KPLZ Seattle. The station subsequently dropped the slogan.

At issue is Bonneville's use of 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 U.S. 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.

SparkNet acknowledges "acceptably different" slogans used at other similarly formatted stations, such as "random radio," "rock without rules" and "whatever."

Both parties have agreed to a hearing scheduled for July 25 in Chicago.