(image by Hrag Vartanian/Hyperallergic)

(image by Hrag Vartanian/Hyperallergic)

Just this week I received an e-mail invitation from a good friend of mine, Bill Abdale, to a workshop he is leading on conservation methods for artists and curators. The workshop will be held at Booklyn Artists Alliance. Very well, indeed.

However, my first thought, having recently heard of a legal dispute over the name and trademark, Booklyn, was, which Booklyn? And this, my friends, is exactly what trademark law is meant to protect: a likelihood of confusion between two “marks” (logos, slogans, names, words) actively used in commerce.

On its website, Booklyn Artists Alliance states that it was founded in 1999 as a tax-exempt organization (otherwise known as a 501(c)(3)). The alleged infringer, St. Nicks Alliance, attempted to register the name, “Booklyn,” as a federal trademark with the US Patent and Trademark Office and, apparently are still using “Booklyn” as a marketing scheme for a new book shuttle program.

Having two entities using the same word to identify similar services (books and reading) is likely a problem. I was confused. It doesn’t matter that both entities are nonprofits, so Booklyn’s nice letter to the community, although nice and well-meant, was not really necessary. What most people do not realize is that unlike copyright, trademarks must be policed by their owners, meaning that the trademark owner/user must make sure that no other entity is also trading and doing business under a similar mark that may produce a likelihood of confusion, because otherwise that owner runs the risk of losing the sole right to use that name as a trademark. Just ask aspirin, zipper, and, yep, heroin!

On September 4, Booklyn artists alliance filed suit against St. Nicks in New York Eastern District Court seeking an injunction, destruction of infringing articles, and damages for trademark infringement and unjust enrichment. Basically, stop using our trademark!

By the way, if you’re in the Greenpoint, Brooklyn hood you should check out Abdale’s workshop. He’s a great artist and a super nice guy who makes and wears awesome rock and metal t-shirts.

Sergio Muñoz Sarmiento is an artist, writer and arts lawyer interested in the relationship between art and law. He currently teaches contemporary art & law at Fordham Law School. You may follow his...