The New York Times Company (“NYTCo”) has filed a trademark infringement lawsuit against Time USA LLC (“Times”) in the United States District Court for the Southern District of New York for using the term “Time100 Talks,” which is claimed to be confusingly similar to NYTCo’s trademark “Time Talks.”
NYTCo, a news agency based in New York, has used the mark “Times Talks” since 1999 in commerce in connection with a series of live and virtual recorded events consisting of conversations between The New York Times journalists and leading talents and thinkers. It holds several federal trademark registrations for the “Times Talks” mark under registration nos. 4,179,358 (issued July 24, 2012), 3,697,025 (issued October 13, 2009), and 2,475,639 (issued August 7, 2001).
Times, a news magazine publisher in New York and a NYTCo’s competitor, has held a trademark for the term “Time100” since 2017. In April 2020, Times expanded the term Time100 to “Time100 Talks” in connection with “a new live event series that convenes leaders from every field to spotlight solutions to urgent global problems and encourage cross-disciplinary action.” In addition, it has also began using other marks similar to NYTCo's "Time Talks" mark, such as “Time for Health Talks,” for other live news events. Shortly after Times began using the mark, it filed a trademark application for “Time100 Talks” with the U.S. Patent and Trademark Office (USPTO). The mark, however, was refused on the basis of it being confusingly similar to NYTCO’s mark. Specifically, the USPTO stated:
Applicant’s [Times] and registrant’s [NYTCo] marks each share the term TIME (or TIMES) combined with the term TALKS. Applicant has merely added the term “100” to the registered mark, inserting it between the two words TIMES and TALKS . . . In this case, the application uses broad wording to describe its “streaming of video material” and “arranging, organizing, conducting, and hosting online educational and entertainment events,” which presumably encompasses all services of the type described, including registrant’s more narrow educational lectures and entertainment television programs . . . .
Because the marks are so highly similar and the services are so closely related, there is a likelihood that purchasers would confuse the sources of the services or believe they stemmed from a single source. Accordingly, registration is properly refused under Section 2(d) of the Trademark Act due to a likelihood of confusion.
In its complaint, the NYTCo states that it has sent several cease and desist letters to the Times for using the mark “Time100 Talks,” but Times has rejected those requests. NYTCo seeks to enjoin the Times from using the “Time100 Talks” and any similar marks to “Time Talks” (such as Time for Health Talks) and damages.