"Playing what we want," or "Claiming more trademark rights than you have"

Billboard Radio Monitor, in a story entitled Bonneville Sued For Trademark Infringement, is reporting that SparkNet Communications is going after a website for "infringing" their trademark. SparkNet has a registered trademark for "Playing what we want," for use with "streaming of audio material on the internet." They have gone after a few radio stations that are using a variation of their slogan. Mind you, they're going after the web sites of the radio stations, and not the part of the radio station you can listen to via your radio (which is amazingly more profitable than a little website that streams poor quality audio of the real station.)

With my standard "while it is very important for trademark holders to enforce their trademark rights" disclaimer, in my opinion from the facts in the news story, SparkNet is going a little too far with their rights in trying to stop the use of what they claim is their mark. The offending examples of "infringement" are:

Today’s new music... and whatever we want.

The Peak and the Arch use "70’s, 80’s... whatever we want.

I have a news flash for Spark- the very important term "Playing" is missing from any of these uses. For you to claim such a wide range of rights, you'd have to claim sort sort of incontestible status, such as long use or being very famous. Add some sort of arbitrary or fanciful nature to the mark, and it's a lot easier to got after infringers who may be using a phrase or wording not identical to your mark. In this case, the only thing that is the same is "we want," and part of the word "what." There are many differences between the "infringing" sites and the registered mark.

1- "What" versus "whatever"
2- "Playing" versus ???
3- 4 words versus more words
4- Mentioning of different dates, genres of music, etc.

Suffice to say, if I was counsel for Spark, I would tell them that it's not worth pursuing this case. It's not an open & shut case in their favor, in fact I think it could go either way- even more likely in the favor of the "infringers." It's kind of silly to bring that kind of suit, especially when it could cost a lot of money, you could lose, and you might have to pay the fees for the other side when they win. Good luck!