Date: Thu, 31 Aug 1995 10:43:55 -0700 (PDT) From: Rex Wockner Subject: WOCKNER UPDATE: BOYS TOWN LEGAL ACTION FATHER FLANAGAN'S BOYS TOWN SAYS COLUMNIST IN CHICAGO GAY NEWSPAPER MUST CHANGE THE NAME OF HIS COLUMN To interested parties: Syndicated journalist Rex Wockner has written an irreverent and playful column in the Chicago gay publication "Nightlines" for five and one-half years. The column has always been called "Boys Town," which is a widely used nickname for Chicago's main gay neighborhood in the vicinity of Halsted, Broadway, Clark and Belmont Avenues/Streets. Wockner was a reporter in Chicago from 1987 to 1993. He now lives in San Diego but continues to write his Chicago column. Here is the full text of a letter Nightlines has received from attorneys for the Boys Town orphanage in Nebraska. Law Offices of Larson and Taylor 727 Twenty-Third Street South Arlington, Virginia 22202 Telephone (703) 920-7200 Facsimile (703) 892-8428 Certified Mail RRR # P587 909 894 Editor Nightlines Weekly Outlines Newspaper 1115 West Belmont Avenue Suite 210 Chicago, Illinois 60657 Dear Sir (sic): Our law firm serves as trademark counsel to Father Flanagan's Boys' Home, popularly known as BOYS TOWN. In this capacity, we have been made aware of the column BOYS TOWN in your newspaper Nightlines Weekly. We wish to call your attention to the prior and exclusive rights of our client to the mark "BOYS TOWN." Our client has been using "BOYS TOWN" in interstate commerce, both as a mark and as a name for over 77 years, since 1917 when it was first founded by Father Edward S. Flanagan. During these years "BOYS TOWN" has advertised extensively nationwide and has served boys from every state in the union. Our client is also the owner of several Federal Trademark Registrations for the mark "BOYS TOWN", including Registration No.'s 1,075,701 ("BOYS TOWN") and 1,082,032 ("BOYS TOWN & Design"). "BOYS TOWN" has also published a newspaper called the "BOYS TOWN QUARTERLY" for over 15 years. There is no question that "BOYS TOWN" is a famous mark known worldwide. The client has invested a considerable amount of time and money in developing it's (sic) famous name and marks and wishes to maintain them at the very "distinctive" status that they presently enjoy. Famous marks, having acquired a high degree of distinctiveness, are protected against the use of similar marks on a broader range of goods and services. The more famous the mark, the greater the likelihood that use, even on non- competitive goods or services will cause confusion. The fame or highly distinctive quality of "BOYS TOWN" cannot be maintained if others are allowed to use the mark. A mark crowded or hemmed in on all sides by similar marks cannot be "distinctive." Eventually it becomes a (sic) "weak" in its ability to prevent use by others in the crowd. In fact, allowing others to use the mark without the proper license may result in abandonment of the trademark, albeit it (sic) involuntarily since it ceases to function as a symbol of quality and a controlled source. The only way a trademark owner can prevent the market from becoming crowded with third party users of "BOYS TOWN" is undertake a program of policing the mark and stopping those who edge too close. It is precisely because of this policing program, in which we as trademark counsel participate, that the mark "BOYS TOWN" is famous, for others have been precluded from using the name and mark. We feel that your use of "BOYS TOWN" is an infringement of our client's legal right to use the mark and name. More important, for the reasons set forth above, our client cannot allow third party use of its (sic) famous mark. Therefore, we must ask you to promptly cease from using the name "BOYS TOWN" in your column. You are, of course, encouraged to consult with your trademark counsel about the seriousness of any continued infringement and about the exposure to the owners of the paper should the infringement be found to be intentional. A response to this letter with assurances that you will cooperate with our request by September 15, 1994 (sic; they mean 1995) will be appreciated. Very truly yours, Thomas P. Sarro **************************REX WOCKNER********************************** Rex Wockner is a widely syndicated journalist whose hard-news reporting has appeared in more than 250 newspapers in more than 20 countries. He lives part-time in San Diego and part-time in San Francisco His e-mail address is rwockner@netcom.com ***********************************************************************