Gannett In ‘VIP’ Trademark Dispute

Ward Schaefer

Jacksons VIP owner Curtis Lyons worries that he cannot fund a legal battle to protect the trademark he owns.

by Ward Schaefer
September 28, 2009

The owner of a Jackson-based events promotion company alleges that Gannett River States Publishing Corporation, which publishes The Clarion-Ledger, is trying to muscle him out of a trademark that he rightfully owns. Curtis Lyons, the owner of Jacksons VIP, is locked in a trademark dispute with Gannett, which has published VIP Jackson Magazine, a free monthly society magazine featuring pictures of wealthy Jacksonians at parties and charity events, since August 2006. The Clarion-Ledger prints 20,000 copies of VIP Jackson a month.

Lyons registered the name "Jacksons VIP" with the U.S. Patent and Trademark Office for use in events promotion and local entertainment listings in 2007, which covered his usage since January 2006. According to the registration, his first documented use of the name was on Jan. 22, 2006. Lyons claims that he has used the name since a 2004 business agreement, though, which would give him precedence over Gannett and VIP Jackson Magazine's previous publisher, VIP City Magazines Inc.

The two operations do seem to target different markets. Jacksons VIP promotes events that attract a primarily black, 30-something clientele; VIP Jackson Magazine's pages are filled with mostly white faces. Still, the two companies accuse each other of infringing on their respective trademarks.

The earliest interaction between the two came in 2007, roughly one year after Gannett bought VIP Jackson from Jeff Watson, the publisher of VIP City Magazines Inc., and launched a Web site specifically for the magazine.

In a letter dated July 5, 2007, Gannett attorney W. Whitaker Rayner demanded that Lyons change the name of his Web site from "jacksonsvip.com" "to names unrelated to VIP Jackson Magazine or http://www.vipjacksonmag.com."

Rayner claimed that the trademarks for VIP Jackson Magazine and the accompanying Web site predated Lyons' Web site. VIP Jackson had been in circulation since at least January 2005, he said.

"In the ensuing two-and-one-half years, the publication, Web site, and trademark have become widely recognized and widely read sources of event, dining and entertainment information, photographs and marketing for various local establishments," Rayner wrote.

Lyons maintains that he never received Rayner's letter, however, and never responded. For almost a year, the two companies had no more communication. Then, on July 24, 2008, Lyons sent an e-mail to the magazine about a fashion show the Gannet publication was promoting.

The event's publicity was confusing to Jacksons VIP members, Lyons told the magazine: "When that started, we got calls from some of our members saying, 'When is the fashion show?' We felt that it wasn't an extension of a magazine to get into fashion shows," he told the Jackson Free Press.

Lyons included the registration numbers for his trademarks and asked the magazine to stop using either "Jacksons VIP" or "VIP Jackson" when promoting fashion shows.

"We thought that going forward that it would be a simple thing," Lyons said. "If we supplied them with the information they need to show that we've been using the mark, they would not infringe on our rights."

Lyons was wrong, however. One week later, on July 31, 2008, Gannett asked the U.S. Patent Office's Trademark Trial and Appeal Board to cancel Lyons' trademarks.

A trademark trial proceeds differently from a standard court trial, with judges reviewing testimony off-site in the form of written depositions. The process takes longer than most court trials; Lyons' proceeding, which he delayed until this fall, is scheduled to wrap up in January 2010. If the Board cancels Lyons' trademark, he can appeal the decision in federal court.

Lyons maintains that he should retain ownership of "Jacksons VIP," not only because he has registered the trademarks but also because his use of the name predates VIP Jackson Magazine.

Lyons' business agreement with his partner, Jawan Nobles, uses the name "Jacksons VIP" and is notarized and dated Nov. 2, 2004. Lyons, who lived in New Orleans until Hurricane Katrina, has no other documentation of his use of the Jacksons VIP trademark until 2006, however, because the 2005 storm destroyed many of his files.

The U.S. trademark registrations for "Jacksons VIP" indicate that Lyons first used the name for events promotion and local news databases on Jan. 22, 2006. Lyons maintains that he has actually used the Jacksons VIP moniker to promote events in Jackson, New Orleans and Dallas since his 2004 agreement with Nobles.

Since Lyons used and registered his trademark before Gannett purchased VIP Jackson Magazine, he has a compelling argument for retaining ownership of the name. Still, Gannett's claim could take precedence, if it secured ownership of the "VIP Jackson" name when it bought the magazine in 2006. That's because the former publisher of VIP Jackson Magazine began using the name in 2005, before Lyons can prove use of his trademark.

Lyons suspects that Gannett does not have rights to the "VIP Jackson" name, however, because of its delay in taking legal action against him after its 2007 warning.

"Why would you let a year expire and not do anything until I approach you about (your) doing a fashion show?" Lyons said. "They could have sued me back then and brought this to a head back then, if they felt they had rights."

Leigh Reeves, general manager of VIP Jackson Magazine, did not return repeated calls for comment. Jeff Watson, publisher of VIP City Magazines, Inc., which sold its Jackson, Miss., publication to Gannett in 2006, also did not return calls for comment.

Despite believing that he has a legitimate claim to his trademark, Lyons worries that he may lose a protracted legal battle. He cannot afford to pay an attorney for long. "It seems like they're taking the position that 'If you want to use the mark, you're going to have to spend a lot of money and fight us—we have more money than you,'" Lyons said.

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