Merlin Strikes Back, Issues Own Cease and Desist

RADIO ONLINE | Monday, January 23, 2012 | 6:06pm CT

In response to a Cease & Desist order by CBS Radio regarding the use of WINS' trademarked slogan, "You give us 22 minutes, we'll give you the world," on WEMP/New York, Merlin Media said it is "not precluded by law" from identifying its competitors and highlighting its competitive advantages and that's its "advertising to date has done just that."

CBS intellectual property and litigation attorneys sent the infringement letter to Merlin Media CEO Randy Michaels on January 20 demanding that he stop WEMP/New York from using "Give us 10 minutes, we'll give you the world" and similar slogans on the air saying the Merlin phrases "intentionally are confusingly similar to CBS' iconic" slogans and call it willful trademark infringement.

"This advertising does not infringe or mislead consumers. Rather, it accurately compares Merlin Media's services to those offered by CBS. Indeed, by highlighting the difference in length of news cycle, Merlin Media makes it clear that it does not want to be perceived as CBS and 1010 WINS-AM ("WINS") in any respect," said Merlin.

"Merlin Media's occasional ad libs of common phrases like 'all news, all the time' or 'we'll give you the world' do not infringe or otherwise violate any rights held by CBS," continued Merlin. "However, because these phrases are not significant in Merlin Media's advertising (if even a factor in such advertising), Merlin Media will endeavor to stop using them in the future."

Finally, Merlin Media accused CBS of engaging in "repeated violations of the Lanham Act by falsely advertising the services it offers at WINS." In particular, Merlin alleges, announcers at WINS proclaim at the top of every hour during their broadcast that WINS is "New York's One and Only All News Station." Merlin says this statement is "patently false" and has been so ever since Merlin Media launched FM News 101.9 in New York in August, 2011.

Merlin is now demanding that CBS immediately cease and desist from making the "false advertising claim" by January 24.