MADELEINE BRAND, host:
It all comes down to the word and.
HBO is trying to block a fitness instructor from calling her business Health and the City. HBO says it sounds too much like its old hit TV show "Sex and the City." But they say it would be okay if Jennifer Cassetta called her business Health in the City.
To explain this and what it means, Jennifer Cassetta is here now from New York City. Welcome to the program.
Ms. JENNIFER CASSETTA (Fitness Instructor; Owner, Health and the City): Hi. How are you, Madeleine?
BRAND: I'm fine. Thanks. So were you indeed thinking of "Sex and the City" when you decided to name your business Health and the City?
Ms. CASSETTA: To be honest, the name popped into my head while I was taking a run and it was pretty organic but at the same time I did make the connection afterwards that it sounded like the show. However, my company, which I do personal training, martial arts instruction and nutrition counseling, has nothing to do with what the show represents. So…
BRAND: Which was all about drinking.
Ms. CASSETTA: Drinking, smoking, sex.
(Soundbite of laughter)
Ms. CASSETTA: So anyway, I tried to trademark the name. I put the application in it over a year ago in October and I was getting postcards from the USPTO, the United States Patent and Trade Office, saying that HBO is trying to oppose my trademark.
BRAND: So, they've done this before. I found out that a "Flex in the City," there was a business that wanted to call itself that or "Pets in the City," they oppose that.
Ms. CASSETTA: There's a ton and you can actually go online at the uspto.gov and check it out and see everything that they have opposed in the past. There is a company, I believe, called "Mex and the City" right now that must have slid past their…
BRAND: Slid past their view. A Mexican restaurant?
Ms. CASSETTA: I believe so.
BRAND: Well, okay. So, there's not much chance of there being confusion in terms of your business and the TV show. People are going to - they're going to figure out that yours is a different business altogether. However, are they arguing, in fact, that you using that name because it sounds so much like their TV show, "Sex and the City" that it just, that it dilutes their trademark?
Ms. CASSETTA: Well, that's going to be up to the USPTO. The lawyer that I spoke with over at HBO actually did admit that my logo and my Web site, which is healthandthecity.net, looks nothing like their logo. I'm not trying to use their imagery or either, even colors or anything like that. So, again, she did admit that it didn't look like that at all.
BRAND: But you can see their point, though, that you are sort of using their name, in a sense. So, you're invoking…
Ms. CASSETTA: I'm not using their name. I'm just using the phrase, and the city, and is, you know, I can't see how HBO can claim that phrase. It's very general.
BRAND: If you had to, what would you rename your business?
Ms. CASSETTA: So, they actually asked me to change it to "Health in the City" and that would cost me thousands of dollars in marketing and changing my Web site, changing my e-mail, changing my brochures and all of that stuff. So I'm not going to do it.
BRAND: So you're going to fight them?
Ms. CASSETTA: I am, I am, and I think I have a good case and people on the blog, on the Wall Street Journal blog that I was written up on, seem to agree with me that I do have a good case.
BRAND: Have you hired a lawyer?
Ms. CASSETTA: Well, I'm a very small business woman starting out, single in New York, you know.
BRAND: Hey, hey, hey, that sounds familiar.
Ms. CASSETTA: Yeah. And so, you know, it's tough to get legal help out there. So hopefully, some nice - where might take me on pro bono, but until then, it's me.
BRAND: Well, maybe HBO should create a show based around you?
Ms. CASSETTA: Why not?
BRAND: Then everyone would be a winner.
Ms. CASSETTA: I think that's a great idea.
(Soundbite of laughter)
BRAND: All right. Jennifer Cassetta, thanks for joining us.
Ms. CASSETTA: Thank you.
BRAND: Jennifer Cassetta is fighting a trademark dispute with a television cable company HBO.