So the valiant residents of Katonah have managed to strong-arm one of their most well-known citizens into dropping part of her trademark application for KATONAH.  Martha Stewart Omnimedia is going to delete some of the goods from the trademark application so that poor Katonah residents, terrorized by Martha's avarice, need no longer live in fear that her ownership of a trademark registration would threaten their way of life and prevent them from using business names like "Katonah Hardware" or "Katonah Furniture Repair."

[Confession: I grew up right next door to Katonah, in Mt. Kisco, NY,¹ but don't have any beef with Katonah.  As I was anything but a jock, there's no festering high school rivalry of which to accuse me!  Still, go Foxes!]

This dispute bothered me first of all because it became clear that the press was too lazy to take the time to understand the basic principles of trademark law, such as how trademark rights arise out of use and not registration, and that the registration of a mark that is a geographic designation for certain goods does not preclude the legitimate use of the geographic name, and that some names are too obscure to even prompt any association with goods identified by the name (all points nicely laid out by Martha Stewart's counsel in its summary judgment motion, by the way.)

But it's more than just the press at fault here.  When I looked more closely at the Katonah Village Improvement Society's opposition, I simply couldn't understand why anyone would bring such a claim.  KATONAH is an absolutely great trademark precisely because the town is a relatively obscure hamlet with minimal national recognition, and thus exactly the kind of geographic term perfectly suitable as a trademark.  What could be the M.O. for filing an opposition — merely to poke a stick in Martha Stewart's eye?  (There I go again, answering my own questions.)  The grounds for opposition on their face virtually admitted the lack of standing and want of a claim on which relief could be granted — that Opposer "has been using the name Katonah Village Improvement Society since 1886 in association with not for profit services for residents of the hamlet of Katonah in the town of Bedford, New York."  But wait — there's more!  "Opposer has published a book entitled 'Katonah The History of a New York Village and its People' written by Frances Duncombe.  The book continues to be sold by KVIS."  Well, those sure have nothing to do with furniture or bedspreads now, do they?  These facts may make great talking points for publicists or journalists, but don't do anything for me as a trademark lawyer.

No, there's no sustainable argument for likelihood of confusion here, other than that KVIS was likely confused as to the extent and scope of its rights.  Were they aware that their name is not the first city name ever to be used as a trademark?  How about these automobiles: Sedona and Santa Fe?  The evocative Toyota Tacoma?  Here's an even better analogy: Verona is a city in Italy, and while it may be fair there, the one in New Jersey?  Not so much, at least not back in the early 70s when my grandparents lived there.  My point though is that the name is just obscure enough so that it doesn't immediately conjure up a specific geographic location, like Katonah, and is thus registrable as a trademark for a wide variety of goods — plumbing products, software, automobiles, and cookies, among many others.

What makes Katonah different from Verona then?  I'll grant you it's prettier, but beyond that, I don't think it's entitled to any special treatment.  So what did Katonah win, besides the opportunity to say it battled a giant?  You tell me.

UPDATED: Comparisons begin at home, I have to remind myself.  So Bedford, the township of which Katonah technically is a part, has been registered alone as a trademark for all manner of goods and services: insurance, fireplaces, metal door hardware, tires, and as part of a composite for mail order catalog services, bottled water, mattresses, and footwear.  Somehow I don't think these registrations and uses have damaged the town's reputation.  So cheers to you, Bedford, and I'll be seeing you for Thanksgiving.
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¹Fun Mt-Kisco-related fact: I starred as Golde opposite former Mt. Kisco resident John Schneider's Tevye in Fiddler on the Roof in seventh grade.