Best of 2011: The seven habits of highly annoying lawyers


First posted on February 4, 2011.

Or, perhaps, the companies that hire them.  Let’s see if we can find all seven in this highly effective – certainly highly earnest! — item from Mark Malek at the Tactical IP blog.

But first, while I haven’t looked into the facts here, this item made me wonder:  Can we find the Seven Habits of Highly Annoying Lawyers in the typical overreaching cease-and-desist letter story?  I would say so:

  • Covey Habit1: Be Proactive
    • Lawyer Habit 1:  Be a Prostitute
  • Covey Habit 2: Begin with the End in Mind
    • Lawyer Habit 2:  Begin with the Fee in Mind
  • Covey Habit 3: Put First Things First
    • Lawyer Habit 3:  Shop for the Right Jurisdiction First
  • Covey Habit 4: Think Win-Win
    • Lawyer Habit 4:  Think Win-Bankrupt Them
  • Covey Habit 5: Seek First to Understand, then to Be Understood
    • Lawyer Habit 5:  Seek First to Understand What You Can Get Away With, then Make Your Threat Understood
  • Covey Habit 6: Synergize
    • Lawyer Habit 6:  Sin
  • Covey Habit 7: Sharpen the Saw
    • Lawyer Habit 6:  Sharpen the Teeth

I’m feeling more effective already!  Okay, now to Mark’s probably unrelated, but highly enthusiastic — not to say excessively perky — offering about the Covey thing: Read More…

The statute that keeps on giving

PTO15_LongBannerV2I am grateful for a break in the Section 2(a) action long enough that I could sneak in some blogging about another topic this week.  Apropos that post’s nostalgic subject, it even generated some old-fashioned comments-section debate about fair use with me on the unaccustomed side of things before breaking developments returned us to our monotonously scheduled programming.

Stephen Baird

Steve Baird: Unlikely to be Confused.

Yes… the thing about Section 2(a) of the Lanham Act — have you heard about that one? — is that, much like whatever it was Yogi Berra was talking about, it’s not over till it’s over.  And it is most assuredly not over.

And neither are the disparaging, immoral and scandalous panels.  So I’d be remiss not to use this space to invite readers to the Intellectual Property Owners Association 25th Annual Conference on USPTO Law & Practice, or “PTO Day,” on March 10, 2015.  Because of my involvement in a certain appeal relating to that law, I will be participating in just such a panel at that conference.

Join LIKELIHOOD OF CONFUSION® (we are one and the same) along with my friend (and past Minnesota CLE host),über-trademark-blogger Stephen Baird (got logrolling?); Jesse Witten — with whom I have also been, um, impaneled recently; and Cynthia Lynch of the PTO in an afternoon session on the trademark track.

John Welch:  Inherently Distinctive

John Welch: Inherently Distinctive

Other friendly mustachioed faces will include that of John “Keeping Tabs on the TTAB®” Welch, who will be presenting, with characteristic wit and grace on recent trademark case law earlier in the day.  Who better?

So don’t be pokey about it!  The program is here, if for some reason you need to know more; click here to register.

Trademarks, the Redskins and the constitution

The NFL’s brief on the issue you’ve read about everywhere, including here, is now out and about (courtesy of John Welch):

NFL v Blackhorse – The Redskins Brief

Coming soon to a bridge under you

Originally posted 2009-07-15 11:03:10. Republished by Blog Post Promoter

Patent Litigation Weekly has a fascinating article about what tangled webs we — well, not we, but patent lawyers — weave when they become, er, patent rights opportunity entrepreneurs — i.e., patent trolls.  In this case, you could call them inbred patent trolls.

The story focuses on the oddly distinct reactions by Fish & Richardson, the fancy patent law shop, to the career choices of two former associates who clearly began trolling while at Fish, and doing so in connection with patents of what appear to be no small interest to Fish clients.

One was fired upon discovery of his “stunning betrayal,” as the firm put it.  Another became a client. Why the different treatment?  The article doesn’t so much as speculate, much less investigate, on what it suggests is very fishy behavior.  Oddly, it ends up bogged down on the fascinating course of litigation over various aspects of 802.11 technology, and the concluding paragraph of the article leaves you wondering if there’s a page jump you missed.

Well, as a former legal journalist and frequent law-firm-ankle-biter myself, but still a lawyer and all that, I can’t help but say this:  Just throwing up a “hmmm, interesting distinction” and casting ethical aspersions at a major law firm doesn’t seem good enough for a piece published on  What ever happened to Steve Brill?  (Oh, never mind, sorry I asked.)   This ends up reading more like a bloggy item or a throwaway in a law-biz gossip column.

The differing treatment could be based on any of a hundred possible grounds, and almost certainly is.  I hold no brief for Fish & Richardson, but that was my reaction to the anticlimactic non-conclusion.  The story seemed half-baked. Just.  Saying.

Still, take a quick look — it’s worth it to be educated about at least the appearance of impropriety, and the issues you may not have thought about, in the lawyer-to-legal-claim-arbitrageur career path.

Hat tip to Jennifer Stevens of Incisive Media (yeah, the new people), via theLinkedIn Intellectual Property Professionals group.

Never trust a hippie?



For years I’ve been kvetching here about the phenomenon of municipal overreach on intellectual property claims, whether it’s catchphrases with no particular geographic association; transit line symbols that do convey meaning but when licensed don’t convey meaningful claims of endorsement or affiliation; skyline features that belong to no one; or municipal seals that the Lanham Act simply says ain’t trademarks.

So when I saw this headline — “Can a town’s name be a trademark?” — I got ready to roll up my sleeves again.  But… no.  This is even more interesting:

Town Board members do not expect to use not-for-profit radio station WIOF as background filler between public access television programs until a trademark dispute is settled that has commercial station WDST claiming foul over use of the town’s name.

Supervisor Jeremy Wilber during a telephone interview Wednesday said the use of “Woodstock 104” by WIOF is being protested by WDST as an infringement on the “Radio Woodstock” and “Woodstock Radio” identifiers. . . .

WDST General Manager Richard Fusco on Friday said station officials have no objections to use of WIOF for the public access channel but believe use of “Woodstock 104” will confuse listeners.

“We’re are not looking in any way, shape or form not have her do it or in any way interfere with what (WIOF Chief Executive Officer Randi Steele) is doing, or in any way want to squelch her project,” he said. “We just saying do whatever you want to do, just don’t infringe on our trademark.”

Radio Woodstock®

Radio Woodstock®

Information provided by WDST shows the station trademarked [sic] the phrases “Radio Woodstock” in 1994 and “Woodstock Radio” in 2002.

Fusco said station officials are hopeful that a court case can be avoided and said there are many options for WIOF to identify itself with Woodstock without use of the town’s name in a tag line or slogan.

“She is perfectly able to say ‘this is hippie radio’ or ‘tie dyed radio’ or what ever name she wants to call it ‘from Woodstock, New York,’” he said. “The geographic location is what she is legally able to use. But associating it as the name of the entity…is an infringement on the trademark.”

Steele contends WDST management is being predatory in efforts to have the phrase discontinued.

“When we submitted the paperwork to the state that was in order to call our radio division ‘Woodstock 104,’” she said.

“You cannot trademark the name of the town,” Steele said. “That’s restraint of trade.”

What we have here is a veritable trademark law festival!  Unlike the Woodstock one, however, this is neither Aquarian, three days long (enough of that!), nor muddy.  But for sure, it’s at least as much fun, and no penicillin will be required afterwards.

Read More…

Best of 2010: Mind bobbling!

Originally posted 2010-12-22 08:00:33. Republished by Blog Post Promoter

Yes man?

First published on March 9, 2010.

I’ve been known to sound the alarm about the rush to register trademarks, and all the more so to register anticipated trademarks.  I argue that — oh, forget it, even I’m tired of saying this over and over again.   Here’s what I said, one of the times I said it:

For well over nine out of ten new businesses, the odds of your idea sinking or swimming on the strength of a trademark are slim indeed, and slim too is the war chest most entrepreneurs bring to the battle of free enterprise. Prove to yourself and the world that you have a business plan, a product or service that people want, the ability to deliver it and to scale it up, the capitalization to fertilize all that and the smile of Providence on your efforts. If in the process you develop something worth protecting as a trademark, that mark has already been storing up goodwill and secondary meaning and is enforceable as against infringers under state law and Section 43(a) of the Lanham Act. If it would be a good, business-justifiable use of what is still early-stage capital to register your trademark at this point, by all means do it.



So there’s that.   On the other hand, what exactly kind of advice is … this?!:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn’t actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

It doesn’t sound so different, does it?  Well, it was written by the icon, human trademark Seth Godin™, famous on the Internet for being famous, whose name I hear all the time and seems to be a guru of some sort though I missed class the day when they taught us why.   Well, I think Seth Godin™ is pretty much just about right there.

But Seth Godin™’s bit of advice comes to me via my very agitated friend Steve Baird at the Duets Blog, who is not at all happy with Godin on Trademark.   Read More…

Indian givers (part 3)

Redskins British Style

Part one and part two of this three-part post were published earlier this week.

When the PTO’s decision revoking the REDSKINS registrations was affirmed by the TTAB, I asked, as others — including the NFL — have asked, whether such sociological (not to say historicist)  time travel concerning the REDSKINS mark comports with constitutional due process.  It’s a serious question.

Indeed, it seems that when it comes Section 2(a), pretty much anything goes, procedurally, at the PTO, as long as the outcome is “no.”  There’s one category of exceptions, as The Slants noted on their appeal.  And it’s the exception that proves the rule.  It’s hard to see how it can be otherwise when slurs referring to what was once called lifestyle choices have been allowed registration while those referring to ethnicity are not.

Could one answer by saying that the statute doesn’t prohibit disparagement of behavior or, even, perhaps, sexual identity, but it does prohibit disparagement of ethnic groups?

There’s only one problem with that.  Here’s the statute (emphasis added, obviously):

1052. Trademarks registrable on the principal register; concurrent registration No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . .

So, what are we talking about here?  The relevant language is “disparage . . . persons.”  Are ethnic groups “persons”?  Are any groups of persons, persons?

Not according to TMEP 1203.03(a), which explains, based on the cases, that “Section 45 of the Act, 15 U.S.C. §1127, defines “person” and “juristic person” as follows:

The term “person” and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term “juristic person” includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.

So what gives?  This definition of “person” doesn’t seem to include races, colors, “peoples,” or “nations” in the ethnic sense.

Read More…

Apple of your eye

Originally posted 2013-02-27 12:25:03. Republished by Blog Post Promoter

Apple Store trademark application drawingHave you ever been to an Apple Store?  I have, and I found it a painful experience.  But that was only because I was at least 20 years older than the average person in the room.  And because the things they sell there really cost a lot of money and work better than my things, which don’t.

Otherwise, it’s very cool.  And very distinctive.

The PTO agrees, and after no small amount of back-and-forth, it’s been widely reported that it has issued a trademark registration for the Apple Store’s layout.

Most of the coverage I’ve seen on this topic has been wretched — not only because it uses the word “trademarked” or describes Apple as “receiving a trademark,” but because it displays the lack of understanding about what trademarks are under U.S. law that such usage betrays.  (No, not going there again, not today.)  But with respect to the granting of a registration for Apple’s trademark — dare I say trademark claim? — I like this piece (cached version — balky server) by law student Deborah Goldman in the Washington College of Law publication, Intellectual Property Brief, which explains the issues well and is rich with links to primary sources.

Deborah notes that the two initial refusals for registration were not based on a lack of distinctiveness or functionality, which you’d expect, but on fairly technical aspects of the application.  These are usually amenable to being overcome with some good draftsmanship, especially since the Examining Attorney will typically let you know what he’s looking for.*  Naturally, lawyers who understand how to take such guidance are something Apple is able to procure: Read More…

“Indian givers” (part 2)

Washington-FredskinsYesterday I ended part one of this post about a proposed law to outlaw any trademark registration rights for the NFL’s Washington Redskins with this question:  Given the offensive nature of the trademark by all accounts and the strong  “political” (not, strictly speaking, congressional) support for such a measure, why didn’t Representative Mike Honda go all the way and propose outlawing any federal enforcement, including in the judiciary and including with respect to common law marks, state-granted registrations or any claim sounding in unfair competition, of any REDSKINS trademark?  Why stop at half-measures such as prohibiting past and future registrations?

I can think of at least three possible reasons.  One is that no one on his staff understands the difference between trademark registration and trademark rights either.  Don’t rule that possibility out — we’re talking about Congress here.

Number two is that such a bill would probably have to go through the Judiciary Committee.  Congressman Honda isn’t on that.  And the Judiciary people — they certainly do understand this stuff, which that raises the third possibility, separate and apart from committee assignments:  Namely, such an idea, no matter how you dress it up, was obviously beyond the pale.  Face it, even in Washington there are some assaults on the Constitution people won’t try, at least out in the open.

Which leads me to my next point:  Registration versus rights?  Really?  Is it really such a trifling thing to shut the door on a party seeking to register its trademark (much less depriving it of a mark it has already been granted)?

This is the point I arguably stumbled over arguing the appeal of the PTO’s rejection of THE SLANTS in the Federal Circuit, as discussed here.  But as we argued in our submissions, and did manage to say on rebuttal during oral argument, the Lanham Act, in its current form, cannot be said merely to give a procedural or ministerial benefit to trademark registrants.  Registration of trademarks does, in fact, have constitutional dimensions not present when the Federal Circuit’s precedent on this question, In re McGinley, was decided:

While many of the benefits conferred by a registration existed at the time of the McGinley decision, the Trademark Law Revision Act of 1988 significantly expanded the substantive rights afforded to owners of federal trademark registrations. See 1 McCarthy on Trademarks and Unfair Competition § 5:9 (4th ed.) One of the more notable amendments in 1988, was the introduction of the new concept of “constructive use” which provides that “[c]ontingent on the registration of the mark on the Principle Register, the filing of an application to register constitutes ‘constructive use’ of the mark. This confers a right of priority, nationwide in effect … .” Id.; see also 15 U.S.C. § 1057(c).

That’s the fact, Jack.  It’s not so much more a dubious proposition to limit the PTO’s ability to register REDSKINS trademarks than to make them unenforceable as a matter of federal law; both are incursions on free speech. Read More…

“Indian givers” (part 1)

redskins-logoFor years I’ve been complaining that so much of the excitement in intellectual property law jurisprudence these days involves policy-making by judges and the PTO.

Funny thing!  So, as it happens, I was recently quoted in an article in the World Intellectual Property Review on the topic of our old favorite, the Redskins trademark case.  And it went like this:

Few intellectual property lawyers in the US (and elsewhere) will need reminding that professional American football team the Washington Redskins was stripped of six trademarks last year after a decision by the US Patent and Trademark Office’s Trademark Trial and Appeal Board.

The term ‘Redskin’—a slang word for a Native American and variations of which were used in all six trademarks—was deemed offensive.

In response to the ruling, the team filed a lawsuit against the Native Americans who initiated the challenge, in an attempt to keep its trademarks. The Native Americans, unable to dismiss the suit, will face off with the club at the US District Court for the Eastern District of Virginia this year.

Ron Coleman, partner at US law firm Goetz Fitzpatrick, says: “The drafters of the Lanham Act [the US’s federal trademark statute] never considered whether a registration could be revoked retroactively upon a finding that, when applied for, the trademark was not eligible for registration because late-coming petitioners succeeded in proving that it was derogatory of an ethnic group.”

Yes, I said that.  Now, a few things, both of which were pointed out by me in a post I wrote around the same time I was contacted by that reporter.  Well, first, one thing that was pointed out by John Welch:  the writer’s statement that “the Washington Redskins was stripped of six trademarks last year ” is inaccurate:  The Redskins were stripped of registrations, not trademarks.  They can still, and will still, sue your pants off for pretty much everything trademarky they could sue your pants off for before.
Secondly, yes, Congress never considered that stuff I said.  The whole of my argument, per my blog post, is this — indulge me here; there’s more to come:

While the goal of avoiding offense by government actions such as trademark registration is laudable, achieving that goal seems more than ever to embroil agencies and judges in deciding highly-politicized and sensitive issues that are arguably not appropriately determined by either. Adding “time travel” to their task only makes it more onerous. . . .

[T]he policy question of whether a registration should be revoked retroactively, after decades of use by the registrant following allowance and evidently with no time limit — as long as the evidence is found to support a contemporaneous finding of disparaging meaning — is probably one that Congress should address. Its application in this case, regardless of the merits under the standards applied by the TTAB, is certainly troubling.

Is what I said.  So now, I wonder, what should I say about this revolting development?: Read More…

Best of 2009: Companies versus their fans

Originally posted 2009-07-07 11:42:48. Republished by Blog Post Promoter

Walter Olson:

The real thing, God save us.

The real thing, God save us.

The famous maker of candies and candy-dispensers is suing the owners of the Burlingame Museum of Pez Memorabilia in Northern California, claiming that its venture into Pez homage, which includes a Guinness-record largest replica of a Pez dispenser, infringe the firm’s trademarks and “deceive the public into thinking that the museum is operating under the authority of Pez.”

You can just imagine how fans feel when they realize this is not true — that the giant Pez dispenser, the whole Pez moment they were sharing with their families was unauthorized…. counterfeit… illicit.

Well, deceived of course!  That’s how they feel.



Yes… they stare stupidly ahead at the interstate the whole ride back home, not knowing whether to feel like the most naive marks ever to be duped into thinking a Pez collection was authorized, or whether they should be securing counsel and begging for peace and no worse than nominal damages and attorneys’ fees — and of course a permanent injunction with molto back-end liquidated damages and then some — for their own sordid part in the whole scummy charade.  For at some point, after all, you have to reckon with wilfull blindness, even on a consumer’s part. And if you press the point, really, think it through…

They knew it, really.  They never really believed, in their hearts of hearts, that this was authorized Pez.  This is never how the Pez people would do it. Read More…

Calling Captain Obvious: Trademark use versus saying something

Archie Bunker Generic Beer


Stop the presses and raise a glass in belated farewell toast to Archie Bunker’s generic beer!  Here’s the big trademark decision that had the IP law Internet foaming last week, per the writeup by the talented Aaron D. Johnson:

Trademark use Within an Expressive Work Must Only Pass the Rogers test, Not a Likelihood of Confusion Analysis: Mil-Spec Monkey v. Activision

The likelihood of confusion test is often called the “cornerstone” of trademark infringement law.  It may be in many circumstances, but it does not apply to allegations of infringement within expressive works, as the recent Northern District of California case of Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., No. 14-cv-2361 (N.D. Cal. Nov. 24, 2014), makes clear.  If the trademark use occurs within an expressive work, the only test that applies (at least in certain circuits) is the Rogers test.  The Rogers test is a far harder standard to meet, requiring that the trademark use have “no artistic relevance to the underlying work” or “explicitly mislead[] as to the source” of the work.

The Mil-Spec case revolves around the latest version of the Call of Duty video game series.  Like the earlier editions in the series, the latest version, Call of Duty: Ghosts, has its players participate in realistic combat missions, either in single-player campaigns that involve plots and storylines, or with and against other players in multiplayer contests.  The court highlights the fact that while the game takes place in a fictional setting in the near-future, the game strives to Arthur Johnsonbe “highly realistic,” with military equipment based on weapons and vehicles that currently exist, incorporating the names and logos of existing armed forces and organizations, and the use of advanced graphics. . . .

Call of Duty: Ghosts allows players in multiplayer mode to customize their digital personas – choosing gender, uniform, weapons, accessories, and whether to include any patches on their uniform. Crucially, one of the patches that the game allows players to put on their characters is highly similar to the Mil-Spec “angry monkey” patch. The patches are visible during the course of the game if one of the players has chosen to put them on his or her character. The angry monkey patch also makes a brief appearance during the course of gameplay featured in an advertisement for the game. Mil-Spec brought a lawsuit against Activision alleging a variety of claims including copyright infringement and trademark infringement. Activision moved for summary judgment on the trademark and unfair competition claims, on the basis that its use of the angry monkey patch was protected by the First Amendment.

And Acti-Vision won.  Why?

Read More…