Yes, that’s the famous old joke on the roadside filling station sign. Well, not the second part. But evidently it’s not a laughing matter at Luke Oil, which overstepped the bounds of what is and isn’t kosher in trademarks:
Lawyers for the Orthodox Union, a kosher food certification group, filed a court motion Monday to dismiss a lawsuit that claimed the Hobart-based gas station chains recently introduced “Serving U” logo infringed on the “OU” symbol the Orthodox Union gives to products certified as kosher. A judge in Hammond federal court will have to rule on the dismissal motion, but judges dont often deny such requests.
Luke Oil Vice President Thomas Collins Jr. declined to discuss the terms of his companys agreement with the Orthodox Union, but Luke has rolled out a new branding campaign to replace the short-lived “Serving U” logo, which was stamped on coffee and soda cups and promoted on company Web site uluke.com. The company is now using a logo that highlights the “u” in the company name.
Here is the complaint. It’s not a particularly interesting case, from a legal novelty point of view, but for the practical trademark litigator and those who hire him or her, there are a few things were worth thinking about in this thin Redweld® brand file folder.
I wondered how it came to all this. The infringement here looks like a chip shot. The flawlessly executed complaint, of course, tells the story, as a good pleading must. The exhibits to the complaint beginning with H — page 36 on the PDF at the link — detail a clear and straightforward cease and desist letter from the OU’s Washington, DC attorneys demanding the old cease-n-desist on September 10th. That very same day, famed cocktail and oil magnate Tom Collins of Luke Oil responds candidly by email that “I find your letter to be fair,” and a quick and easy settlement, sans lawsuits and snarky blogging, seems in the offing.
The days turn into weeks, however, and Luke Oil hems and haws while it lines up its own counsel to get its arms around the situation. Finally their guy gets back to the OU lawyers on September 22nd, asking for “a week or two” to do the math here, and then, evidently, more radio silence. Finally the OU, tired of chasing after these oily characters, loses its patience and lets the papers, including this 28-page submission (25 pages of brief and a short declaration) fly on October 7th. A relatively quick settlement follows. Now, tell me: Was this lawsuit necessary?
Even if not, it was nicely executed, and that’s not for nothing. There is a way to make a chip shot, after all, and there’s nothing uglier than missing one. The OU and its lawyers sunk it.
Having said that, the shot was made, but basking in the glow of justice done, if maybe a little hastily?, and the integrity of kosher consuming protected, perhaps the swing might have been even prettier? Hear me out here. This part is only for lawyers, by the way. The rest of you, scoot. Back to the clubhouse!
Apologia: I say all the following with the knowledge that there is hardly one among us (there are some but I will not embarrass them by naming them) whose papers could not be picked apart by a jealous wise-guy colleague. No guess is easier than the second guess. My own flubs are certainly available enough, thanks to my own endless appetite for (strictly kosher) self-promotion as well as the new world of electronic online filing, that a whole blog could be dedicated to Ron Coleman bogeys. And I wouldn’t want to start too much of a precedent here of presuming to teach a masters’ class on trademark litigation. Honestly. But I do have these thoughts, and they’re blogworthy because these papers bring up questions I have about trademark litigation papers I see all the time, not merely in this case. For all my Monday-morning quarterbacking, remember — and don’t think I forget: The OU didn’t call LIKELIHOOD OF CONFUSION® to handle this case; they called Bingham & McCutchen!
That picture at the top of this post is the best I could find of the offending infringement, in the papers or otherwise. It’s from a scan of a black and white office-printer printout of a web page, attached as exhibits to the complaint. The other pictures are even worse. In this day and age, where you can easily generate a color PDF directly from a web page or a digital photograph (as some of the other exhibits seem to be based on), why wouldn’t you? (Examples here and here, and just for instance from my friend Kevin Houchin here, okay?) This is especially true when you’re relying on these papers for injunctive relief?
Now unfortunately the Northern District of Indiana is, like the Southern District of New York, still one of those benighted districts where you open a case with a paper complaint and the clerk scans it in “for you” — obviously in black and white. But that’s an even better reason for at least starting out with big, clean, direct printouts from the Web (such as here) rather than murky photocopies, when you can.
Oddly enough, too, neither the complaint nor the exhibits were authenticated by a person with first-hand knowledge of the facts alleged therein, so the only records of fact before the court were the brief boilerplate affidavit. This may have as much as anything to do with local practice, of course, as well as the fact that in a case such as this one, it was almost certainly all that was needed. But having the complaint itself, and of course the exhibits, filed as a verified pleading and explicitly relying on both on the motion would have certainly been the best practice, yes?
And let’s not talk about those “exhibit tabs.” Someone just has to explain to the paralegals who do the ECF filings in some offices that the likes of the bel0w (which if you hunt you will find on some of my papers too, I admit — no, I am not linking to examples!) will not pass any more!
Don’t get me wrong — under the federal rules, these are certainly kosher, but … we really want to answer to a higher standard, no?