Archive by Author

A theory of likelihood of confusion

Originally posted 2007-08-24 08:02:28. Republished by Blog Post Promoter

The Legal Theory Blog excerpts from a recent article on the the back story of trademark litigation, by one Michael Grynberg:

The plaintiff effectively represents two parties. She defends her trademark and simultaneously protects consumers who may be confused by the defendant’s behavior. The defendant, by contrast, stands alone.The resulting “two-against-one” storyline gives short shrift to the interests of non-confused consumers who may benefit from the defendant’s purportedly infringing behavior. Ignoring these consumers is especially problematic given the ease with which courts apply pejorative labels, like “misappropriation” and “free riding,” to the conduct of trademark defendants. As a result, courts are too receptive to non-traditional trademark claims, like initial interest and post-sale confusion, for which the case for consumer harm is questionable.

More rational results are available by appreciating trademark litigation’s parallel status as a conflict between consumers. This view treats junior and senior trademark users as proxies for different consumer classes and recognizes that likely confusion among one group of consumers may affirmatively harm others.

I like anyone who tries to push back harm-to-the-plaintiff-free trademark lawsuits based on “non-traditional trademark claims,” and I have not read the whole article (I don’t think it’s available on line), but I don’t quite think this works. As a practical matter I do not believe that this “two against one” burden is a meaningful one for defendants; on the contrary, it is a burden the plaintiff has to carry: He has to convince the courts that not only he, but consumers, are being harmed by the alleged infringement.

Well, that’s how it’s supposed to work. The problems is the opposite one from what it seems Grynberg is saying: Judges ignore the consumer-harm burden placed on the plaintiff, and treat trademarks as rights in gross. Or at least, some do; and the corporate trademark bar most certainly wants them to.

Thus the problem is the mirror image of the one posited.  The solution: Don’t add a factor to the defendant side; merely recognize it on the plaintiff side. It’s been there all along, feeling lonely, judges.

Starting ‘em out young

Originally posted 2007-02-11 19:43:15. Republished by Blog Post Promoter

Counterfeit Chic looks at tomorrow’s counterfeiters. Well, that’s how Susan looks at them, anyway. When you’re a carpenter everything looks like a nail, you know?

The seven horsemen of the Ablawgalypse

Originally posted 2008-01-06 16:55:13. Republished by Blog Post Promoter

I hadn’t picked up on this — as part of its “ABA 100” story, the ABA Journal published brief profiles of the seven “revolutionaries” of law blogging, as they see it:

All good choices. One thing I find noteworthy: Only one of them (Goldstein) works for a major law firm (though probably most or many of them have, at one time or another). I wish I had the time to run down the whole ABA 100. I suspect the big firms are way under-represented, especially considering the obsession with Big Law at publications such as American Lawyer.

Why? It’s not just because running a good legal blog is time-consuming. It’s because blogging well on a real topic requires independence of mind, a distinct style, strong opinions and willingness to stick out — not a good combination at all for success in institutional corporate law firms. Believe me.

Dead hand of copyright limited in UK

Originally posted 2007-07-25 01:01:52. Republished by Blog Post Promoter

Boing Boing reports that the English have done something impossible in our own country: Turned back an effort to extend copyright for, all practical purposes, ever — 95 years:

This is the first time that I know of, in the history of the world, that any country has given up on extended copyright terms. In the US, the Supreme Court found that 98 percent of the works in copyright were “orphans” with no visible owner and no way to clear them and bring them back into the world. Extending copyright dooms nearly every author’s life’s work to obscurity and disappearance, in order to make a few more pennies for the tiny minority of millionaire artists like Cliff Richards (and billionaires like Paul McCartney).

It gives one hope. (On the other hand… Cliff Richards?)

What’s new up North

Originally posted 2007-05-25 13:26:36. Republished by Blog Post Promoter

The Canadian Trademark Blog writes about three recent trademark decisions from the Canadian courts that readers may find of interest.

Show me the money

Originally posted 2007-12-27 16:33:41. Republished by Blog Post Promoter

Just registering or making minimal use of a domain name, much less “parking” it, is not “use in commerce.” There’s got to be some… commerce! Most lawyers practicing in the area of trademark law know this, but LIKELIHOOD OF CONFUSION® exceeds ordinary aspirations and speaks directly to its people — the people who call up trademark lawyers and want to register trademarks based, indeed, on the names of websites not yet in being or even less.

So, when is use of a would-be trademark in a domain name “use in commerce”? Well, per Michael Atkins, now we know a little more about when it isn’t:


Plaintiff argued he had gained exclusive control over the use of the word “whisper” in the title of his project because he had acquired a service mark in his Web site domain name [] for “providing information, via the Internet, in the field of entertainment, namely, the development, production and distribution of motion picture films.”

The court disagreed. In June, Judge Jeffrey White denied Mr. Guichard’s motion for preliminary injunction because “his described use of the WHISPER OF THE BLUE mark does not satisfy the ‘use in commerce’ requirement necessary to establish priority of use. Although Plaintiff alleges that there have been multiple visits to his website since its launch on February 4, 2006, this minimal use does not establish ‘use in commerce’ as required to establish priority. There is no showing that Plaintiff has used his mark in the actual sale or advertising of services in commerce.”

Our advice is the same for 80-90% of people who make such inquiries: Build your business first! If there is a brand worth protecting, it will be because you have made it valuable by virtue, not of the Patent and Trademark Office, but of having generated at least a little commerce — money, busness, gelt! — under its name!

Most of these people never come back, and it’s not because they didn’t love the advice, or the one who gave it. It’s because they end up not building the business. Hey — LIKELIHOOD OF CONFUSION® has been there, and not-done that. I hope it works better next time. But in your case, at least I didn’t get you there $850 (plus disbursements) quicker.

In this great country, trademark rights and priority are established by use, not registration — the rest is commentary. Now, go and use!

Olympian irony

Originally posted 2007-12-03 14:23:31. Republished by Blog Post Promoter

img214070886_sss.jpgChina, faced with loss of revenues from the sale of “unauthorized” Olympics merchandise in connection with its “Berlin for the 21st Century” games, has suddenly developed a taste for IP enforcement:

Beijing is battling to stamp out illegal sales of 2008 Olympic merchandise on dozens of unauthorized Web sites seeking to cash in on the Chinese public’s Games fervor, local media reported on Monday.

Authorities had investigated about 80 commercial and personal Web sites selling fake Olympic merchandise, or lacking licenses to sell the legitimate product, the Beijing Youth Daily said, citing an Olympic e-commerce official. . . .

Beijing Olympic organizers have targeted making $70 million from merchandising from the 2008 Games, from a range of about 4,000 products.

But despite authorities making a point of cracking down on Olympic-related forgery, local media reports of police busting fake Games souvenir makers and street peddlers are common.

Only $70 million?

What a Mess

Originally posted 2007-05-30 21:46:35. Republished by Blog Post Promoter

Dennis Crouch surveys the latest developments on the patent doctrine of “Inequitable Conduct Based on Failure to Submit.”  If you’re not a patent lawyer (by which I mean someone who writes and prosecutes patents), that combination of words may not move you, but believe me, this much-linked article — and the high-quality discussion thread it generated — will.

If you can’t beat ‘em

Originally posted 2008-01-29 11:57:17. Republished by Blog Post Promoter

Iron ManName Wire:

In what Agenda Inc. refers to as a “highly ironic move,” notorious brand naming counterfeit hotspot Silk Street Market in Beijing has applied for a trademark to its own SilkStreet clothing label and warned counterfeiters not to copy it.

In what must be the most lenient criterion for reselling a high end brand in the world, the company solemnly assures us that only traders with ““no record of selling fake or shoddy products within six months and no [customer] complaints.” can sell SilkStreet brands.

Well, I am really into irony these days, so dig in with me. This is more than ironic, though: The idea of of building a brand on the concept of brand counterfeiting is the first example I know of what we might call (well, I am about to call) reverse meta-branding.

Reverse meta-branding! You like that? There’s even some irony left over.

Likelihood of Confusion Archives

Originally posted 2007-05-31 01:06:00. Republished by Blog Post Promoter

You want authoritative?

Go for the Gold, man!

Originally posted 2008-01-08 10:40:48. Republished by Blog Post Promoter

Get up to speed with the best and most popular links from last year’s edition of Technology & Marketing Law Blog, by Eric Goldman.

Search or destroy

Originally posted 2007-12-24 15:34:52. Republished by Blog Post Promoter

The Cincinnati Enquirer reports this chilling story:

A local attorney and instructor in legal studies at the University of Cincinnati’s Clermont College has been hit with a $1.3 million malpractice judgment for negligence that helped put a local company out of business. . . .

According to Judge Triantafilou’s ruling in the bench trial, Davis was negligent in performing his duties as the company’s trademark attorney when My Girl Friday was starting to sell franchises around the country.

That negligence included telling Collinsworth for more than two years that he had done a title search while registering the company name, when in fact he had not.

I assume they mean a trademark search. I can’t find anything else about the case online, so I’m relying on the newspaper report. From what it says, that’s a harsh, but justifiable, result.