Originally posted on June 5, 2012, this may be the best post of all of 2012, and maybe ever, on LIKELIHOOD OF CONFUSION® or any other blog.
Okay, on LIKELIHOOD OF CONFUSION®.
Bates numbering, that is.
As a litigator, I’ve been living with Bates-numbering, or Bates-stamping, for over 20 years. (I’m not the only one!) I have manually stamped documents using a Bates stamp.
These days we Bates-stamp (not “Bate-stamp”) electronically, mostly.
I noticed this when I was Bates-stamping a small supplemental document production using Adobe Acrobat today. It looks like this (click the graphic for a better look):
So, as a trademark lawyer, that made me a little curious. Because “Bates” sounds like — and is — a name, right? Proper name… a product… associated with one another…. what is that called again?
A trademark, maybe? Does a trademark belong in the Adobe menu like that?
Well, BATES is a common enough name that I wasn’t going to read every single BATES trademark registration. (For free, that is.) So in running down this issue, I only read the live ones. I didn’t find anything.
Strange, I thought. No one ever tried to protect the BATES numbering stamp trademark? Indeed, in the pictures of old Bates stamps I snagged off the Net for this piece, there is no indication of an effort to assert a trademark — an effort that, if applied diligently, would probably have been succesful.
But I had to make sure… and, wait a minute!
I had spied this version of the Bates stamp in several pictures. Finally, I found this clear shot of a Bates stamp bearing the mark BATES with a “circle-R” trademark registration symbol! Ah… Bates® … Royall®! Circle-R! You can in fact buy one even today.
Not really, it seems. Or not quite.
So…. another Google search, this time for the words BATES and ROYALL, and I got to a helpful link on Trademarkia, those scoundrels!, listing all the “Bates Manufacturing Company, The.” There are 35, says Trademarkia. Of them, 34… dead. The live one:
Why, that’s not a trademark registration for BATES at all!
Among the dead registrations listed by Trademarkia, in fact, none of them seems quite to identify a Bates stamp, i.e., a “numbering machine.”
So it seemed clear: ”Bates numbering” is indeed generic for Bates numbering — the placement of serial indices on images and documents, such as in preparation for document production in a litigation matter, and, historically, with a Bates stamp. This is a nice little article on Bates stamps, by the way, among all the ones I saw preparing this post. Tah-dah!
Well, not so fast.
Now Edwin Bates (per this Wikipedia article) knew a little about IP, or his lawyer did: He got three patents for his Bates stamp. No trademark, though?
No, not ”no trademark.” Well, not “no trademark registration.” Keep reading.
Did you think I was going to rely on Trademarkia for this answer? Read More…