• by Wendy Davis  @wendyndavis, October 29, 2012

The alternative weekly chain Village Voice Media has sued the review site Yelp for infringing trademark by using the words "best of" in its listings.

The newsweekly chain says that it owns trademarks to phrases starting wtih "best of" and ending with 10 particular locales -- Broward Palm Beach, Dallas, Denver, Houston, Miami, Phoenix, Saint Louis, San Francisco, Seattle and the Twin Cities.

Village Voice argues that its trademark allows it to prevent any other publisher from characterizing particular restaurants, or other local businesses, as being among the "best of" businesses in those areas.

The alternative chain says that Yelp infringes trademark by using the "best of" language online in conjunction with local businesses, and by selling ads on pages with the "best of" wording. Village Voice, which filed suit last week in federal court in Arizona, is asking a court to award it Yelp's profits from those ads and other damages.

This isn't the first time that Village Voice Media has attempted to stop another publisher from using the phrase "best of." Last year, the company sued Time Out New York for allegedly infringing trademark by publishing an issue with the coverline "Best of NYC."

Time Out counterclaimed in court papers that Village Voice should never have been awarded a trademark for the phrase "best of." Time Out argued that the phrase "Best of NYC" is the "common descriptive or generic name for a variety of print and online publications' lists of New York's best restaurants, movies, plays, things to do or places to go."

The lawsuit and counterclaim were voluntarily withdrawn in April. It's not clear from the court papers whether there was a financial settlement.

Yelp hasn't yet addressed Village Voice's allegations, but likely will argue that the company's trademark should be invalidated on the ground that a phrase that uses a common adjective like "best of" was never eligible for trademark protection. If so, Yelp has a good chance of prevailing, predicts Santa Clara University law professor Eric Goldman.

"These kinds of laudatory trademarks should not be protectible in trademark law, period," he says. "I can't see how Village Voice has a prayer of winning."