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Likelihood of jurisdiction

Appellate courts, we see, choose what interests them, and how much.  Sometimes they surprise the parties and their counsel.

We weren’t all that shocked about the argument in Naffe v. Frey, the free-blogger-speech case involving Patterico, but perhaps the degree of the court’s emphasis on one issue as opposed to the other was a bit surprising.  We (the legal team including Ken from Popehat) were ready for it, however.

You’ll understand what I mean if you scan the brief, and then behold the oral argument:

I love my job.

Out to launch

The deceptively simple process of “trademarking”


James Major of Hitlab

Somewhere, some time — I think, perhaps, it was in my contribution to this work, actually — I noted that with the advent of online trademark registrations, it has become deceptively easy to think anyone — just anyone! — can register a trademark.  Later I held forth more boldly, and for free, in this space on the perils of do-it-yourself trademark applicating.  Did it scare anyone off?  I hope so, but I doubt it.

Now, however, I think I have been bested or, at the very least, quite a bit bettered by this post by James Major on Patently-O entitled Pitfalls in Trademark Prosecution, who may just have scared me off, though at least James agrees with me on one point:  It’s become too easy to think you’re doing it right.  His introductory paragraph:

In a post entitled “Trademark: Registration Void if Completed Prior to Actually Rendering Services in Commerce,” Prof. Crouch asserted that “[o]ne of the traditional benefits of trademark law is that it has fewer disastrous pitfalls for the uninformed (as compared with patent law).”[1]  This guest post respectfully disagrees with Prof. Crouch and asserts that trademark law contains administrative traps for the unwary not commonly found in patent law.

Of course, a patent prosecutor and a trademark attorney can each make substantive and procedural errors; creating an estoppel and blowing a deadline, respectively, are just two.  But, substantive and procedural errors are hardly unique to patent and trademark law.  This post argues that there is the possibility of what I will call “administrative” errors that are unique to trademark law. These administrative errors arise partly because of the ease of submitting documents to the United States Patent and Trademark Office (the “USPTO”) through the Trademark Electronic Application System (“TEAS”),[2] and partly because of the fundamentals of U.S. trademark law.

The piece goes on to delineate a number of “pitfalls” for lawyers filing applications to register (not “to trademark,” of course) or assign trademarks and to examine them in turn, specifically: Read More…

Marco Randazza SLAPPS back

My brother-from-another-mother Marc Randazza is obsessed these days, and understandably, with an attack on anti-SLAPP statutes, particularly the one in Nevada:

I get at least one call a week from someone who wants me to file a defamation claim. I turn almost all of them away, because most of them are either frivolous, or just don’t have a good chance of winning, or they will backfire on the Plaintiff.

At least once a month, one of them says something to the effect of “I don’t care if I win, I just want to bury this guy.” They dangle very large checks in front of me.

My answer is “I don’t use my law license that way. Might I suggest you retain a more ethically flexible lawyer.”

When the potential plaintiff in that situation is looking at filing in a state with an Anti-SLAPP act, they usually don’t bother at all after I explain the ramifications of an Anti-SLAPP motion. . . .

But someone didn’t like that.

Therefore, last week, in a pretty sneaky legislative maneuver, the Nevada Senate Judiciary Committee slid through Senate Bill 444. The bill is a paragon of sleaze. It starts off with preamble statements that make itseem like it is there to protect freedom of expression, but once you read it, you realize that whoever drafted this must have done so with the clear intent of destroying the Anti-SLAPP law.

  • It creates a Rube Goldberg mechanism for bringing an Anti-SLAPP motion — which will clearly increase the cost of litigation. 
  • It narrows the definition of “issue of public concern” – so consumer reviews, social commentary, and other forms of important public speech are now outside of its protection.
  • It weakens the attorneys’ fees provisions of the existing law.
  • It lowers the burden for unethical plaintiffs to keep their SLAPP suits alive.
  • It repeals important provisions that seek to deter plaintiffs from filing anti-SLAPP suits in the first place.
  • It is tailor-made to ensure that public figures do not have to be worried about New York Times v. Sullivan at the SLAPP stage, anyhow.
  • It virtually ensures that you can’t ever bring an Anti-SLAPP motion in federal court.

Marc is not happy. Read More…

Holding Their Ink-Stained Breath Till They Turn Blue

Originally posted 2005-02-20 09:47:00. Republished by Blog Post Promoter

Update on the the Tulsa World silliness: Michael Bates reports, citing to the blog Tulsa Topics, that the World has wisely decided that it will deal with criticism of its editorial and political deeds by disabling its own Internet capability, not only to Michael and his critical blog but to the rest of humanity — including its own paid customers! Now no one can get PDF’s off their site.

That’s the best way to protect your copyright: Just publish for your friends and family. This way if any of them crosses the line — WHAM! You ground ’em, or don’t invite them to the cousin’s club meeting, or disinherit them. Good thing is you keep the mess away from those Article III judges and their pesky technicalities.

Another victory for self help. Is anyone at Overlawyered going to compliment the World on this? Don’t count on it!

Federal Circuit on the THE SLANTS: [Updated]


Our new world -- and welcome to it

UPDATE: When this post was written, the world we lived in was one particular kind of world.

Then the morning of Monday, April 27, 2015 came, and we were living in a very different world.

I spoke about The Slants’, and my, transition to that world here …  and a few other places.

So, that’s The Slants’ juridical world now, their only one, and having said what I’ve said — which, you’ll grant, is plenty — while I won’t delete any posts, I won’t be commenting on the case any more on LIKELIHOOD OF CONFUSION® until it’s over.

Remember when I said, and said, and said, the appeal involving the TTAB’s rejection of the trademark application for THE SLANTS was fundamentally about PTO procedure and hardly at all a matter of constitutional law?  And that the constitutional issue was, really, not necessary to reach for to find merit in the appeal?

I said that, right?

See?  This works fine.

See? This works fine.

I thought I said that.  I thought I wrote that.  I thought I argued that.

Evidently, however, someone wanted to write an opinion on constitutional law.  Maybe someone wanted to write it in another case, even, but that case wasn’t before that someone.  So someone thought this case would be a good substitute for that case.

So the issues we appealed on got an amount of shrift which you are free to measure for yourself, and THE SLANTS lost their appeal.

And you’re wondering, by the way, was it unanimous?  Is there a dissenting opinion, perhaps, such as might form the basis for automatically taking the appeal to the full panel?

Well, go to page 12 of the opinion, and tell me the answer to that.  I’m always interested in additional views.

UPDATE, April 27, 2015, from the Federal Circuit:  Never mind;  please come back soon.

Likelihood of improvement: Archer & Greiner, PC

Archer IPWelcome me to my new firm, Archer & Greiner, P.C.  I’ll be a partner resident in the firm’s New York City and Hackensack, New Jersey offices (that’s me, always straddling the Hudson) but at your beck and call in all the bunch of other ones, too — and, more importantly, embedded, for the first time ever, deep in the rich goodness of a bona fide IP-department which in turn is ensconced in a sophisticated full-service regional law firm for real.

There’s even PDF at this link that describes the IP group, to take home with you, for free.  No, really, it’s on the house.

This is going to be fun, right?



MEAT THE BLOGGERS XI: Just picture it!











Yep, you figured it out!  And you can RSVP for this year’s Meet the Bloggers, which will take place Monday, May 4, 2015, from 8:00 PM to 11:00 PM, at Henry’s Pub & Restaurant, 618 Fifth Avenue, San Diego, CA 92101, at this link.

See you there!

Proof of God’s existence

Mark-o! Polo!

Originally posted 2011-06-02 11:11:25. Republished by Blog Post Promoter

Horses and perfume -- perfect together

Looks like somebody’s going to be ponying up:  here’s the latest in the saga between the (old) rich (the U.S. Polo Assocation) and the (new) preposterously rich (Ralph Lauren):

The US Polo Association filed a suit against Ralph Lauren claiming that the fashion giant is trying to make money off the logo and the sport itself. The lawsuit comes as the US Polo Association looks to market its own line of fragrances.

A New York judge didn’t see things quite the same way as the Polo Association, though. Federal judge Robert Sweet noted that Ralph Lauren has been using the single player polo logo in conjunction with the word ‘polo’ on its products since 1978. He stated that while there is plenty of room for both companies to “engage in licensing activities,” it is another matter entirely for the US Polo Association to “use ‘polo’ in conjunction with the double horsemen mark on fragrances.” According to the judge, such use would cause confusion among consumers. Judge Sweet issued a permanent injunction requiring the polo association to drop all claims.

No respect for the upper crust

The opinion is here, via the Law of Fashion blog, which explains the context of the dispute — which outfit was the first one to realize that horses and fragrance were a good association? — and comments insightfully:

In a nutshell, Judge Sweet ruled that Polo Ralph Lauren got to the fragrance market first, and that the official U.S. Polo Association — which entered the market twenty years later, with a confusingly similar logo — is out of luck.  Permanently enjoined, to be precise.

Apart from arguing that there was no likelihood of confusion here, the USPA had accused Ralph Lauren and its fragrance licensees of “attempting to monopolize the depiction of the sport of polo.”  The Court responded:

There is . . . clearly room in our vast society for both the USPA and [Ralph Lauren] to engage in licensing activities that do not conflict with one another, and nothing contained in this opinion should be construed as precluding such activities . . . . Nonetheless, to the extent the USPA [uses] “polo” in conjunction [with] the Double Horsement mark on fragrances, this is another matter.

This ruling is especially interesting because, in 2006, a jury found that “the solid Double Horsemen mark with [the accompanying text] ‘USPA’ [was] not infringing in the context of the apparel market.”  (Emphasis added; for more on the previous case, look here and here.)  For Judge Sweet, the fact that the present dispute involved fragrances, not apparel, and that the text accompanying the “Double Horsemen mark” differed in the two cases, meant that the earlier outcome had no bearing here.

Bear?  Horse?  Perfume?

What do I know?  In any event it appears that the Association’s claims failed the smell test.

Likelihood of extrusion

Originally posted 2011-04-18 14:15:24. Republished by Blog Post Promoter

iLrg-szyk-haggadah-four-sonsReprinting my annual Passover post, updated for modern microblogging sensibilities and adjusted for days of the week as they come out this year:

I’ve been hit by pre-Passover preparations — the First Seder is tonight — plus the need to front-load the making-a-living part to make up for the fact that I will be “out of pocket” this weekend and essentially on mission-critical-only duty for next week, too.

Here’s a nice thought on the topic, appropos for our 24/6 social media lifestyle:

The 21st century is certainly a marvelous time in which to live. Space exploration, computerization, the taming of vicious diseases are all truly amazing feats. But we also suffer more burnout, mental exhaustion, attention deficit disorders and high blood pressure than ever before. They are no doubt the effects of our own hi-tech servitude. Like it or not, we’re ruthlessly on call to someone for something all the time. And, we call it “normal.”
Read More…

Secondary Trademark Infringement: Don’t wait for the movie!

Critics agree:  Buy the Jane Coleman and Griff Price’s Secondary Trademark Infringement from Bloomberg BNA –or you’re liable to miss the big one!

Secondary Infringement