Hasidim all right, and I don’t like what I see’d

Originally posted 2007-04-20 14:36:47. Republished by Blog Post Promoter

There’s a long and venerable — and not very pretty — history of disputes among religious groups, especially in break-away contexts, over the trademark rights in their names. There have also long been succession fights among Hasidic groups upon the deaths of their grand rabbis or rebbes, which in recent years have spilled into the secular courts, despite the grave religious prohibition on recourse to non-Jewish courts to resolve disputes among religious Jews. But this is the first time I know of where these two things have combined: A Hasidic trademark fight.

Disclosure: I was involved in this case at the beginning, on behalf of one of the competing groups of Bobov hasidim (mainly in Brooklyn and Monsey, New York), whose adherents split into two camps after the death of the late Grand Rabbi Naftali Halberstam, son of the Grand Rabbi Shlomo Halberstam, a towering figure who built a great dynasty on American soil following the destruction of his family and court in the Holocaust. My friend and former partner, David Stein of Montvale, New Jersey, is a Bobover hasid, and he is still handling this work, and the client has authorized us to discuss this in public. It is a fascinating issue: Should the PTO have any role in deciding which of two competing hasidic groups should be allowed sole use of the dynasty’s name? We say it should not, and now David has filed 12 oppositions to pending trademark registrations (see here and here) to prevent it from doing so.

Last year our client, one of the two competing Bobov congregations, learned that the other group — which had already initiated litigation over the disposition of various real estate and other assets — had filed a series of trademark applications for various combinations of key words, including BOBOV, relating to the “business” of being the Grand Rabbi of Bobov.

We took the unusual step of writing a letter of protest during the pendency of the trademark application. Here’s a copy of what we filed, and here is a text version of the letter, which I reprint in whole because the issue is so fascinating and, frankly, important. Ultimately, the PTO permitted our letter as to one of the trademarks — BOBOV, the most important one — and denied as to the others. This is not surprising, considering the narrow band of consideration available for a letter of protest. Nonetheless, the PTO granted the application and published the BOBOV mark for opposition anyway.

Thus the issue is now before the PTO on an opposition basis; more oppositions will come on line as more of the applications are presumably published for opposition. I welcome your comments on this matter, and invite practitioners and others with thoughts on the topic to correspond directly with David Stein at dstein (at) stein-firm.com.

UPDATE April 23: David Stein emails:

Just received motions to dismiss for lack of subject matter jurisdiction from [the] “other Bobov.” Ironically, they claim that the TTAB can’t hear our notices of oppositions because we are bound by an agreement to arbitrate in the Beis Din [rabbinical court]. Is that a bit like killing your parents, and then asking the court to spare you from the death penalty because you are an orphan?

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Author:Ron Coleman

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16 Responses to “Hasidim all right, and I don’t like what I see’d”

  1. Roberta
    April 20, 2007 at 3:29 pm #

    Cf., Chabad dispute over use of the Rebbe’s image – most recently on an Egged bus – here.

  2. Bob Miller
    April 23, 2007 at 1:34 pm #

    Here, we’re dealing with very large organization with assets and logos that has split in two over the issue of succession. All things being equal, this is still not as bad as a permanent pitched battle inside one organization. The divorce has been done, and the assets are being divided up.

    If your problem is less the tragedy itself and more that it’s being adjudicated in a secular court, can you identify any functioning rabbinic court that would have been willing to take this on, and would have been able to exact compliance with its judgments in this matter?

  3. April 24, 2007 at 12:27 pm #

    My “problem,” Bob, is that while most of what you’re saying is correct, the PTO simply does not have the tools, nor should it probably employ them if it does, as a constitutional matter, to decide which of two factions are the owners of the “trademark.” I also question seriously whether trademark law has any business here at all.

  4. Mark
    April 24, 2007 at 1:18 pm #

    I’m a trademark novice. My question is can the name of a city or town be trademarked? Most or all of the Hasidic factions’ names are based on city names. Although, most are European, some are American cities (Boston, Cleveland, Pittsburg etc.)

    If the answer is yes, can the corporation holding the trademark force the city to change it’s name? This following would be a very interesting episode. One of the many Bostoner Rebees trademarking Boston (and Avdak Boston, Bostoner Rebbee, Admor Me’Boston etc.). They will then force all other Bostoner Rebees to change their name. Then they will sue the city of Boston for infringement and force them to change their name (any suggestions). In ten years from now the current US map will be obsolete.

    Also, do the Poles have to abide to the PTO rules? Will the town of Bobov have to adopt a new name?

  5. April 25, 2007 at 10:41 am #

    Mark, many place names are in fact trademarks and are protected both by specific statutes and trademark law. For example, you may not market a fizzy wine and call it champagne — CHAMPAGNE is a trademark under French law for wines made only from the grapes grown in the Champagne region of France (the enforceability of that trademark in the US is actually a live issue). On the other hand, unless a city named itself after an existing trademark — say you and I founded a new city in Utah and called it “Chevrolet City” — I am not aware of any basis that a company could have to compel a municipality to change its name!

    International enforcement of trademarks is also a complicated issue. It is largely governed by an agreement called the Madrid Protocol.

    I would not sweat anyone having to change their cities’ names based on the trademark rights claimed by Hasidic Jews!

  6. April 25, 2007 at 3:18 pm #

    There’s also Philadelphia brand cream cheese. (Is the stuff even actually made in that city?)

    As for cities named after a pre-existing trademark, there’s Truth Or Consequences, New Mexico, which was named after a game show (I think when the show offered to do something favorable for the first town willing to name itself after them).

  7. mike
    April 25, 2007 at 4:56 pm #

    Obviously as all things in the jewish world everyone claims that he is involved and he knows all the facts.  The FACT IS that all you might be privy to is what you heard in the “Mikvah.” The FACT IS that BOBOV did not split after and i quote you “after the death of the late Grand Rabbi Shlomo Halberstam (ZT”L)” it split only after the death of Grand Rabbi Shlomo Halberstam’s son Grand Rabbi NAFTALI Halberstam (ZT”L).

    Ed.:  Good catch, Mike.  Give me a break — I wrote this erev Shabbos and have corrected the dumb error.

  8. Trademarker
    April 30, 2007 at 1:41 am #

    Why chasidic organizations are different from any other non-for-profit organization is beyond me. Don’t you think that a corporation has rights to its name. You seem to think that when you write “split” the organization or corporation actually divided in to two functioning separate clones. A corporation doesn’t split, one side retains control of the corporation while the other moves on or fights for it in court or arbitration. One can argue that corporation XYZ is currently in the wrong hands but that doesn’t mean that an organization or corporation doesn’t have rights to its mark. Of course the USPTO should grant protection to religious corporations; as they would for any other entity. I fail to understand why you find these applications so peculiar.

    Young Israel,
    OU,
    These you’d understand to be true trademarks, why not Bobov?

  9. May 2, 2007 at 3:09 pm #

    They are trademarks, but there is no dispute about their provenance. Usually when a branch or affiliate breaks off, there is no serious factual question about where the goodwill resides. Here two parties of an unincorporated association of sorts simultaneously claim to be the real thing.

    I fail to understand what you fail to understand. Can you direct me to other hasidic courts that have sought trademark protection for their “brands”?

  10. May 2, 2007 at 7:17 pm #

    Hi Ron,

    I read your blog article and then reported the story on my own blog http://blog.ipfactor.co.il , see http://blog.ipfactor.co.il/2007/04/24/rival-bobov-factions-in-trademark-dispute/
    since we cover IP issues from an Israeli angle, and boboviously there are a number of local hassidim who will find the issue interesting.

    Anyway, I did a search of the Israel Trademark Database and it turns out, not surprisingly, that there are 14 Bobov trademarks filed in Israel by United Bobov International, Inc.

    There are possibilities to oppose trademarks in Israel. Usually they are opposed because of interferences etc.

    The closest Israel precedent I can think of to the current issue off hand is a mark for Kaynus (i.e. canes) which is a descriptive term for schach (succa covering) in Yiddish, and had competing succa machers fighting it out.

    By the way, for the record, I am a mitnaggid, both philosophically and historically (at least on my father’s side of the family), so have no personal interest in the issue.

    Michael

  11. lawyer
    May 3, 2007 at 11:01 am #

    I just read what Ron responded to Trademarker. I think he is totally wrong on the argument. The issue of the two parties claiming to be the real thing is something that is being discussed in arbitration, but why is this relevant to the USPTO giving a trademark for the name? If the arbitration rules that the other side is the real thing then I guess they will get the trademark protection! Also, you asked? to be directed to other Hasidic courts seeking trademark protection, again, what relevance does this have to the law?

  12. May 5, 2007 at 9:55 pm #

    Because a trademark denotes in almost cases a single source of goods or services, and here there is not only a factual dispute as to which of two claimants that source is, but as a factual matter they are both correct and therefore neither should have rights vis-a-vis the other.

    You may, in the alternative, argue that both should have the rights as against all others. That may be a good argument. I have blogged on the “single source” issue before, and been enlightened as well. But here, making a choice as to one court or the other would unconstitutionally entangle a federal tribunal in the question in which of two competing groups is the “real Bobov.”

    My question as which other Hasidic courts have done this (answer: none) is not relevant to the law. It is relevant to Jewish practice, custom and dignity, however.

  13. Trademarker
    May 7, 2007 at 3:40 am #

    “Usually when a branch or affiliate breaks off, there is no serious factual question about where the goodwill resides.”

    Of course there isn’t any question where the goodwill resides, it resides with the corporation/kehilla it has always been associated with. The breakaway part is a new entity/source and will only use the mark if authorised by the corporation. Should the new entity decide to unjustly use the mark, well, that’s when you need trademark protection.

    Why Chasidik Kehilla’s names are less worthy of protection than other Kehillas is beyond me.

    Belz, Ponivitsh, Ger, all these are strong marks and recognised by all as such. No one would dare use their name with impunity, hence there is no reason to register those marks. Should one of them feel their mark is threatened, then they should be able to register it.

    Being that you don’t profess to be an expert on “Jewish practice, custom and dignity”, and being that it isn’t relevant to the Trademark Law, I will refrain from commenting on your view of “Jewish Custom and dignity”.

  14. May 7, 2007 at 7:02 am #

    Trademarker, you take quite an attitude for someone without the nerve to sign his name to his comments. Nonetheless I will respond to your points. This time.

    Of course there isn’t any question where the goodwill resides, it resides with the corporation/kehilla it has always been associated with.

    All you’ve done is restate the question. Where there is a simultaneous break and the original source of the goodwill — arguably the previous Admor himself — is no longer able to assert that goodwill, there is a bona fide and probably irreconcilable factual dispute as to the competing claims that requires either that registration be denied or that it be permitted to both groups, neither of whom has priority of use vis-a-vis the other. That is the trademark law part.

    Now, if you believe one or the other competing Bobov court is properly and non-controversially identified as the “breakaway” and the other as “the [one] is has always been associated with,” you are entitled to your opinion, but I believe firmly that you are wrong. A contemporaneous split immediately follow the passing of the Grand Rabbi means there is no way to identify one or the other faction in such a manner. Physical possession of real estate is certainly not the deciding factor.

    Being that you don’t profess to be an expert on “Jewish practice, custom and dignity”, and being that it isn’t relevant to the Trademark Law, I will refrain from commenting on your view of “Jewish Custom and dignity”.

    Hasidic kehillos’ names are not necessarily entitled to less protection than other kehillos. And like most the vast majority of kehillos, most Hasidic courts do not seek the aid of the government in securing that protection. Perhaps they should in a time where everything is up for grabs. But in the middle of a dispute currently pending in beis din (and even otherwise), resort to gentile courts in an internecine dispute is a massive breach of Jewish law, custom and dignity. We non-experts call it a chillul Hashem and an issur d’oraysa. Ask your local expert what those terms mean.

    Feel free, however, to continue to refrain from commenting unless you identify yourself or take a different attitude less redolent of what we non-experts call “snark.”

Trackbacks/Pingbacks

  1. Rival Bobov Chassidim in Trademark Dispute « The IP Factor - April 24, 2007

    […] There is a good article on the subject by self-styled IP Maven, Ron Coleman. The succession issue is not unique to Bobov of course. […]

  2. LIKELIHOOD OF CONFUSION® » Blog Archive » Don’t start with a Hasid - November 21, 2007

    […] The New York Court of Appeals agrees, refusing to get involved in a succession fight among rival groups of one of the largest hasidic groups, the Satmar hasidim. What does that have to do with LIKELIHOOD OF CONFUSION®? Well, of course, it recalls our discussion of the still-active trademark dispute among rivals in the Bobov hasidic group. And it reinforces our argument: Secular courts, and other agencies such as the Patent and Trademark Office, will be well advised not let their good offices be part of this “fun.” […]

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