Trademark infringement alleged in North County newspaper dispute

July 24, 2015

warA media executive who recently left a threatening voicemail for a North County competitor alleges the employee-turned-competitor is infringing on his intellectual property rights by operating a publication with nearly the same name. [Paso Robles Press]

On June 18, John Tompkins, the president of News Media Corp. and owner of the Paso Robles Press and Atascadero News, left a voicemail for Scott Brennan, the owner of online publications Paso Robles Daily News and Atascadero Daily News. Tompkins threatened to go after Brennan personally.

“I for some reason have just woke up and finally looked at what you’re doing against us in Paso Robles, now Atascadero,” Tompkins said in the voicemail. “You want to go to war with us, we’ll go to war.”

Brennan published the recording Thursday in both of his online publications. Brennan stated Tompkins is an out-of-town bully who is trying to stifle independent news rather than compete with it.

Later in the day, Tompkins’s Paso Robles Press published an article explaining the voicemail.

“He was using our name,” Tompkins said. “I was personally hurt that Scott would do this, therefore I sent the voicemail. What I meant by going to war is that Scott had shot the first shot by using our name.”

Earlier this week an attorney representing Tompkins sent a cease and desist letter to Brennan. The letter ordered Brennan to stop using the name “Atascadero News,” saying it is too similar to “Atascadero Daily News,” which is trademarked and has long been the name of Tompkins’s newspaper.

The letter states the similarity in names violates California trademark laws and creates a likelihood of confusion that harms News Media Corp.’s business. The letter also states Brennan had been using @atascaderonews as a Twitter account.

Brennan launched Atascadero Daily News two months ago. He founded Paso Robles Daily News in 2012.

From 1995 to 2006, Brennan worked for News Media Corp., rising the ranks from the business office of a Watsonville newspaper to publisher and editor of a King City paper and eventually publisher of the Paso Robles Press.

Tompkins said he has done a lot for Brennan. Tompkins also questioned Brennan’s timing of the release of the voicemail.

“I find it ironic that this comes out the day after he was contacted by our lawyers to stop using our name — Atascadero News and Atascadero Daily News. He’s had the voicemail for more than a month now and coincidentally released it,” Tompkins said.

Brennan responded in an article Friday morning. The article quotes Brennan as saying that he is just a hardworking person trying to make a living in North County.

“I am not a lawyer, and I cannot afford a big-city lawyer specializing in trademark law like theirs,” Brennan said. “I am not going to put one dollar into a legal fight against a multi-millionaire.”

Tompkins founded News Media Corp. in 1975. The company owns 76 newspapers across the United States. They are published in small cities and towns ranging in population from 1,000 to 50,000.


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NorthCountyGuy

The Chicago Mob has spoken.


Paso_citizen

If you really wanted to compete against something that calls itself a newspaper – come

out with something called San Looie Obispo Trombone and do a better job at

reporting sports news. I would subscribe at the drop of a hat.


The current version of SLO”s Fibune is the most pathetic example of a newspaper that

I have seen in my life.


BeenThereDoneThat

What I don’t get is HOW this is so hard to understand. Like I commented before there are a lot of cities that have numerous newspapers that use the city name in the title of their paper.


To me the reason in probably simple. If it is Bob’s newspaper, you might say………pertaining to what? If you say Bob’s Paso Robles Newspaper, then there is an association to where and what it might be talking about.


When you go and query something local online how do you nail down your search to an area??? Do you put California? San Luis Obispo County or Paso Robles such and such.


Face it folks there IS NO case here PERIOD!!! I would LOVE to see this go to court. I will say right now I bet Tompkins will lose. All the lawyers are there to scare etc. because Mr. Tompkins wants to have his temper tantrum. Oh whoa is me, he went out and started a business after he worked for me. Guess what, I have my own business and left my boss (with notice) years ago. He didn’t cry about it and we actually talk semi regular, even trade ideas and help, even thou we compete against each other, 18 years down the road.


Vagabond

No, I’m pretty sure Tompkins will win, he only needs to prove that a reasonable person could be confused about which paper they were purchasing.

Atascadero Daily News (Which Thompkins ownes the TM)

In my opinion can be confused with

Atascadero News (Which is being contested)

It’s not about anything else. Trademark law insists that you have to defend your trademark.

Now imagine that he didn’t defend it, after a while Mr Brennan could defend his TM against mr Thompson and just because Mr. Thompson didn’t defend his TM earlier he would likely loose that TM.

Of course Mr Brennan could simply change the name of his paper and all of this would evaporate, in fact I’m pretty darn sure he has received the cease and desist order which would have informed him of that.

So why the fuss? Perhaps the old saying ‘any publicity is good publicity” is in application here, and the fact that both parties are in the “publicity” business is suspicious, at least to me.


Kiler

I find there is a certain naivety with respect to Mr. Brennan. Why does he have to name his website the same as an existing entity? Especially one you don’t even want to be associated with since the current newspaper is really nothing to be proud of.


Why could he not have called it Paso Robles Reporter, Report, News, etc.?


Trademarks, or in this instance, Service Marks, are issued by the US Patent Office. You merely get in touch with them and find out if a certain Service Mark has been registered. If it has, you’re out of luck. If it has not, you can register it by paying a fee. Then you can tell someone who is using it, regardless of how many years he used it, to abandon it or you could sue.


Actually a very simple process.


northcountyresident

It is not the same and News Media Corp. does not have a trademark. Look it up online.


mkaney

You are confused about the details. The News Media Corp paper in Paso is called the Paso Robles Press. Mr. Brennan’s site is called Paso Robles Daily News.


In Atascadero, News Media Corp’s paper is called the Atascadero News. So you can clearly see that when Brennan added Atascadero to his line up, he was merely change the city name, as opposed to trying to name it something similar to “Atascadero News.”


Vagabond

As much as I would like to stand with Mr Brennan Trademark laws are an entity unto themselves If you have something trademarked you MUST defend that trademark otherwise you loose it. And I certainly can see someone confusing the two.


godislanguage

Atascadero Daily News does indeed sound too much like the Atascadero News.


Atascadero News has been branded already and using Atascadero and News in a product that is in direct competition with Atascadero News is asking for litigation, especially if the new founder was a previous employee.


To separate his product from the established product, I would think it would have been wise to use a different word than News…like Examiner, Journal, Dispatch, or ????.


This is easy food for the 800lb Gorilla…why feed the lawyers in defense…should have spent a whole lot less in the start up.


Business is business and Atascadero Daily News sounded to me like a new supplement to the 2 paper a week Atascadero News.


My guess is he got a cease and desist and if I suggest a name change post haste before the Attorney’s and damages start racking up.


It’s really no big deal at this point ….chalk it up as advertising


mkaney

You’re right but from a “who is in the right” standpoint, when Tompkins left the voice mail, he never mentioned the name issue… so this was just his first shot in the war. Prior to creating the site for Atascadero, Brennan was running Paso Robles Daily News.. so “Daily News” is actually the branding and he just changed the city name.


godislanguage

In successful business, especially the sensitivity of Intellectual Property and who is the ORIGINAL author of the work or who has the rights of use, one takes abundant caution to avoid plagiarism or copy infringement.


To this businessman, this is either a strategy on the part of “Daily News” author, or shortsightedness. Strategy to get his news source identified, which worked because now I’m aware of the copy cat “Atascadero Daily News”


Regardless the evolution of the “Daily News” has run into what appears as a LEGITIMATE copyright infringement complaint in the Atascadero market, thereby giving his competitor legal and moral leverage against the company. A fundamentally bad move on the part of “Daily News”, since any reputable author, journalist, designer, etc knows plagiarism is taboo.


It doesn’t matter really who is right and who is wrong, its perception and now I’ve identified “Atascadero Daily News” as a copy cat PERIOD time to move on, I have too many thing to do to argue the color of the sky.


Dispense with the emotional argument that poor little “Daily News” is being bullied by the nasty big Corp, it’s nothing but noise.


Kiler

It is my understanding of trademarks that certain words, which are part of everyday usage among the populace, can not be trademarked. Paso Robles and Atascadero, would, in my humble opinion, fall into these categories.


Vagabond

Nope. the words BY THEMSELVES can not be trademarked, but string them together and you have an entirely different cat.

They sound too much alike and utilize the same words. If you own the trademark YOU MUST defend it or risk loosing it, That’s just the way the law rolls.


bsdetective007

It’s always the employees you trust the most.

A non compete clause is vital to business owners.

This might hurt Mr. Brennan more than he thinks. Businesses might not want to advertise with him now.

I’m sure whenMr. Brennan calls a business he introduces himself as “Hi, this is Scott from Atascadero Daily News.

My Rep would always call and say ” Hi, this is Gary from Atascadero News.

It could be a little sketchy.

Just saying.


ml1999

My understanding is that non-compete clauses are generally not enforced in California. We value competition.


kayaknut

Unless it’s the government, they don’t like competition….


ml1999

P.S. The “infringement” is another matter altogether.


northcountyresident

Brennan has not worked there in almost 10 years.


miles archer

Stand tall Mr. Brennan, you are in the right.


Sit down Mr. Tompkins, you are in the wrong.