Tag Archives: Lawyers

Best of 2011: Upper crust – the POCKET SANDWICHES croissants saga

Originally posted 2011-12-28 07:40:21. Republished by Blog Post Promoter

First posted on July 15, 2011.

Letters, we get letters.

Sometimes people just want to share their trademark woes with me. Sometimes they want free advice, or cheap advice, or just a broad, powerful if round trademarky shoulder to cry on. I am a man, and no one’s crying towel, yet — surely even a litigator can have feelings.

Carl Vennitti is no crybaby, but he has been sharing the story of nearly seven years of trademark-registration and opposition adventures with your tender-hearted blogger. His adversary: A little outfit called Nestle, another brutal chocolate-pusher but also famous as maker of — yes —

HOT POCKETS.

Hot Pockets. Carl’s mark (no, not Karl Marx! ahem): POCKET SANDWICHES — not (as originally written) CROISSANT POCKETS, and… not too confusing at all. Or is it?

Likely to be confused?

What do I know? Let’s ask the TTAB, which after dealing with some flaky procedural business — deftly addressed, as was the substance of the case, by (of course) John Welch shortly after the decision issued in May of 2011 — pulled that yummy concoction (one imagines) out of the microwave and laid it before us on a stiff wax-coated paper plate. Starved as we are for rich, IP-blawgy goodness, we reached for our heavy-duty plastic fork and knife and …

Ah, but first we must address the substantive crust of the matter before we bite into the hot, steaming mass and taste of the LIKELIHOOD OF CONFUSION analysis within. The better to let it cool off just a tad anyway, no?

It turns out that the opposer, Nestle, isn’t exactly quite the registrant of the trademark. It is a licensee of some foreign outfit that owns that piece of paper. Well, being a licensee is the same as being the real guy, right? Well, not necessarily. Certainly not necessarily in copyright… and also not in trademarks if you are before the TTAB. The Board noted that, even in the related District Court litigation, it had been recognized that, in a regular court, an “exclusive licensee of a trademark has the right to enforce the trademark” — but that this rule does not apply in the specialized context of a TTAB opposition proceeding:

We do not interpret the definition of “registrant” in Section 45 of the Trademark Act, 15 U.S.C. §1127, to include exclusive licensees to the extent that they may rely on Section 7(b) presumptions [of priority based on a first-use date in the trademark registration]. Licensees may enforce trademark rights, but must establish priority through evidence of use and may not rely on their licensor’s registrations.

That’s something to know and remember, right there! But before the inside of this hot sandwichy-type thing cools down too much, can’t we dig into the LIKELIHOOD OF CONFUSION (LOC) question?

Not so fast, hungry boy. Look, isn’t a Hot Pocket just, you know, a hot pocket? If it is, that’s a pretty weak trademark you have there! How can the opposer even oppose registration if it doesn’t even have a real trademark — i.e., a distinctive one?

Applicant argues that opposer’s mark, HOT POCKETS, is merely descriptive and the evidence of record is not sufficient to establish that it has acquired distinctiveness. . . .

Based on [a] survey in the first quarter of 2004 the HOT POCKETS brand commanded 96 percent brand awareness, meaning that when asked if a consumer had heard of the HOT POCKETS brand 96 percent responded yes. . . This evidence is sufficient to establish, at a minimum[,] that HOT POCKETS had acquired distinctiveness for frozen stuffed sandwiches by the first quarter of 2004, prior to applicant’s filing date.

Ninety-six percent? Yes, I’d agree — “at a minimum,” that’s distinctive, at least in the acquired sense, and that’s some rights you got there.

In view of the above, opposer has shown rights in the mark HOT POCKETS prior to applicant’s filing date and, thus, has established priority. We turn then to consider whether there is a likelihood of confusion.

My favorite part! Are you going to finish yours?  
Read More…

Cajuns cooked

Originally posted 2009-08-04 18:02:22. Republished by Blog Post Promoter

Attorney Scott Wolfe, flush with victory, sends along this update on the Louisiana lawyer advertising rules I blogged about last fall, when I said, “Get that?  According to this, everything posted online by a Louisiana lawyer — and God help a Web 2.0-oriented shop such as Wolfe or, say, LIKELIHOOD OF CONFUSION®— has to be run past a Louisiana oldlaw censor at $175 a pop!  Even assuming it isn’t bounced, that’s a lot of pops per pixel.”  The judge, it seems, agreed:

On Monday, federal Judge Martin Feldman declared unconstitutional Louisiana’s new regulations of attorney advertising on the Internet.

Scott Wolfe Jr. and Wolfe Law Group, who practice construction law in New Orleans, Louisiana, challenged the new lawyer advertising regulations as they applied to the Internet. Wolfe argued the regulations failed to consider the differences between television and Internet advertising, and regulated Internet ads without a need.

More here from the ABA Journal, and here’s the opinion.

Upper crust – the POCKET SANDWICHES croissants saga (Part 1 of 2)

Originally posted 2011-07-15 00:16:11. Republished by Blog Post Promoter

Letters, we get letters.

Sometimes people just want to share their trademark woes with me.  Sometimes they want free advice, or cheap advice, or just a broad, powerful if round trademarky shoulder to cry on.  I am a man, and no one’s crying towel, yet — surely even a litigator can have feelings.

Carl Vennitti is no crybaby, but he has been sharing the story of nearly seven years of trademark-registration and opposition adventures with your tender-hearted blogger.  His adversary:  A little outfit called Nestlé, another brutal chocolate-pusher but also famous as maker of — yes —

HOT POCKETS.

Hot Pockets.  Carl’s mark (no, not Karl Marx!  ahem): POCKET SANDWICHES — not (as originally written) CROISSANT POCKETS, and… not too confusing at all.  Or is it?

Likely to be confused?

What do I know?  Let’s ask the TTAB, which after dealing with some flaky procedural business — deftly addressed, as was the substance of the case, by (of course) John Welch shortly after the decision issued in May of 2011 — pulled that yummy concoction (one imagines) out of the microwave and laid it before us on a stiff wax-coated paper plate.  Starved as we are for rich, IP-blawgy goodness, we reached for our heavy-duty plastic fork and knife and …

Ah, but first we must address the substantive crust of the matter before we bite into the hot, steaming mass and taste of the LIKELIHOOD OF CONFUSION analysis within.  The better to let it cool off just a tad anyway, no?

It turns out that the opposer, Nestlé, isn’t exactly quite the registrant of the trademark.  It is a licensee of some foreign outfit that owns that piece of paper.  Well, being a licensee is the same as being the real guy, right?  Well, not necessarily.  Certainly not necessarily in copyright… and also not in trademarks if you are before the TTAB.  The Board noted that, even in the related District Court litigation, it had been recognized that, in a regular court, an “exclusive licensee of a trademark has the right to enforce the trademark” — but that this rule does not apply in the specialized context of a TTAB opposition proceeding:

We do not interpret the definition of “registrant” in Section 45 of the Trademark Act, 15 U.S.C. §1127, to include exclusive licensees to the extent that they may rely on Section 7(b) presumptions [of priority based on a first-use date in the trademark registration]. Licensees may enforce trademark rights, but must establish priority through evidence of use and may not rely on their licensor’s registrations.

That’s something to know and remember, right there!  But before the inside of this hot sandwichy-type thing cools down too much, can’t we dig into the LIKELIHOOD OF CONFUSION (LOC) question?

Not so fast, hungry boy.  Look, isn’t a Hot Pocket just, you know, a hot pocket?  If it is, that’s a pretty weak trademark you have there!  How can the opposer even oppose registration if it doesn’t even have a real trademark — i.e., a distinctive one?

Applicant argues that opposer’s mark, HOT POCKETS, is merely descriptive and the evidence of record is not sufficient to establish that it has acquired distinctiveness. . . .

Based on [a] survey in the first quarter of 2004 the HOT POCKETS brand commanded 96 percent brand awareness, meaning that when asked if a consumer had heard of the HOT POCKETS brand 96 percent responded yes. . . This evidence is sufficient to establish, at a minimum[,] that HOT POCKETS had acquired distinctiveness for frozen stuffed sandwiches by the first quarter of 2004, prior to applicant’s filing date.

Ninety-six percent?  Yes, I’d agree — “at a minimum,” that’s distinctive, at least in the acquired sense, and that’s some rights you got there.

In view of the above, opposer has shown rights in the mark HOT POCKETS prior to applicant’s filing date and, thus, has established priority. We turn then to consider whether there is a likelihood of confusion.

My favorite part!  Are you going to finish yours? Read More…

Best of 2011: Golden Nugget: Request for proposal

Originally posted July 26, 2011.

Golden Nugget

All that glitters

I’m requesting that the Golden Nugget casino accept a proposal from me — I want to handle their cost-effectiveness-be-damned domain trademark enforcement program! Ryan Gile explains:

When one considers that the minimum cost that a trademark owner would incur to file a domain name arbitration action under the UDRP is around $3000 (including fees paid for the arbitrator) and with an uncertain outcome (as anybody who has been involved in UDRP arbitrations will tell you), [infringement] lawsuits are a much much more cost effective way for a company to obtain possession of these domain names ($300 lawsuit filing fee, $100 bond, and maybe around $500-$1000 per case for attorneys fees and costs (assuming great economies of scale), since most of the documents are nearly identical and can be prepared mostly by administrative staff). In addition, unlike in a UDRP action, the lawsuit route allows the complainant to make a claim towards statutory damages for cybersquatting (minimum $1000 up to $100000 per domain name). Given the low likelihood that the Defendants will even respond to the complaints, each lawsuit has the strong potential to garner a $100,000 default judgment (albeit a judgment that is more often than not nearly impossible to collect).

Still, even at a price of about $1000 per domain name, one wonders why [Golden Nugget Las Vegas] wants to invest even that amount of money for some of the domain names it is seeking. All GNLV is doing is preventing other third parties from obtaining a relatively minuscule amount of [pay-per-click] revenue from the PPC ads showcased on the landing pages for each of these websites. As for the websites involving typosquatting, I continue to maintain that the vast majority of web users looking for GNLV’s GOLDEN NUGGET are saavy enough with respect to internet browsing that they will not be sidetracked by a landing page that offers links to an online casino or other hotel/casino – and will instead recognize their typo and retype the correct URL address or perform a search using one of the more popular internet search engines (which are certainly not fooled by these websites). When all is said and done, GNLV will be the proud owner of several domain names that will likely do very little in promoting the GOLDEN NUGGET brand and will generate very little additional traffic for GNLV’s websites (along with very little additional revenue) beyond what GNLV would’ve already had, but which GNLV now will have to continue to pay annual registration fees in order to maintain these domain names. But I guess GNLV considers that fee (along with the fees paid to its lawyers for these sutis) a small price to pay to prevent domainers from making a single penny (literally) off of the GOLDEN NUGGET mark.

Wonder not, Ryan! I’m willing to wager a guess at this one. I would bet it’s akin to Intel’s domain name enforcement policy: When you have a trademark that is the same as one or more English words, you employ a take-no-prisoners approach to enforcement. It’s part of the illegitimate, but well recognized and mainly judicially-sanctioned, wall that surrounds any “high equity” intellectual property. That wall is built out of the bricks of litigation and the mortar of financial ruin on any who would dare surmount it.

No, that doesn’t mean I think there’s anything meritorious in pay-per-click income illegitimately derived from someone else’s trademark, or that it’s not trademark infringement to generate such income. Read More…

Golden Nugget: Request for proposal

Golden Nugget

All that glitters

I’m requesting that the Golden Nugget casino accept a proposal from me — I want to handle their cost-effectiveness-be-damned domain trademark enforcement program!  Ryan Gile explains:

When one considers that the minimum cost that a trademark owner would incur to file a domain name arbitration action under the UDRP is around $3000 (including fees paid for the arbitrator) and with an uncertain outcome (as anybody who has been involved in UDRP arbitrations will tell you), [infringement] lawsuits are a much much more cost effective way for a company to obtain possession of these domain names ($300 lawsuit filing fee, $100 bond, and maybe around $500-$1000 per case for attorneys fees and costs (assuming great economies of scale), since most of the documents are nearly identical and can be prepared mostly by administrative staff). In addition, unlike in a UDRP action, the lawsuit route allows the complainant to make a claim towards statutory damages for cybersquatting (minimum $1000 up to $100000 per domain name). Given the low likelihood that the Defendants will even respond to the complaints, each lawsuit has the strong potential to garner a $100,000 default judgment (albeit a judgment that is more often than not nearly impossible to collect).

Still, even at a price of about $1000 per domain name, one wonders why [Golden Nugget Las Vegas] wants to invest even that amount of money for some of the domain names it is seeking. All GNLV is doing is preventing other third parties from obtaining a relatively minuscule amount of [pay-per-click] revenue from the PPC ads showcased on the landing pages for each of these websites. As for the websites involving typosquatting, I continue to maintain that the vast majority of web users looking for GNLV’s GOLDEN NUGGET are saavy enough with respect to internet browsing that they will not be sidetracked by a landing page that offers links to an online casino or other hotel/casino – and will instead recognize their typo and retype the correct URL address or perform a search using one of the more popular internet search engines (which are certainly not fooled by these websites). When all is said and done, GNLV will be the proud owner of several domain names that will likely do very little in promoting the GOLDEN NUGGET brand and will generate very little additional traffic for GNLV’s websites (along with very little additional revenue) beyond what GNLV would’ve already had, but which GNLV now will have to continue to pay annual registration fees in order to maintain these domain names. But I guess GNLV considers that fee (along with the fees paid to its lawyers for these sutis) a small price to pay to prevent domainers from making a single penny (literally) off of the GOLDEN NUGGET mark.

Wonder not, Ryan!  I’m willing to wager a guess at this one.  I would bet it’s akin to Intel’s domain name enforcement policy:  When you have a trademark that is the same as one or more English words, you employ a take-no-prisoners approach to enforcement.  It’s part of the illegitimate, but well recognized and mainly judicially-sanctioned, wall that surrounds any “high equity” intellectual property.  That wall is built out of the bricks of litigation and the mortar of financial ruin on any who would dare surmount it.

No, that doesn’t mean I think there’s anything meritorious in pay-per-click income illegitimately derived from someone else’s trademark, or that it’s not trademark infringement to generate such income.   Read More…

Upper crust – the POCKET SANDWICHES (and maybe croissants) saga (Part 2 of 2)

Last week I told the story — as told through this TTAB opinion — of Carl Vennitti’s seven-year tug of war with Nestlé (properly “Nestlé’s,” I guess — but that’s a lot of punctuation to ask people to put in your name, so sorry guys), maker of Hot Pockets food-type product and owner of the HOT POCKETS trademark.  The battle was over Carl’s attempt to use and register the trademark SANDWICH POCKETS.  I promised that part 2 would consist of Carl telling his own story, because I believe, as a blogger, in the Freedom Principle.

Trademark lawyerWhat is the Freedom Principle?

I, as a blogger, have an obligation to use material submitted to me for free if there’s any rationale way it fits with the editorial and I can thereby get a post out of it.

There is no greater freedom than this.

There’s an extra surprise, because this guest submission comes with its own introduction by another trademark blogger, Benjamin Ashurov, who writes a blog called Trademark Bully.  I have added some explanatory links to his introduction to the SANDWICH POCKETS saga, regarding which, you may have noticed if you read this and the prior post carefully, I have actually offered no opinion.  I also take no responsibility for any factual claim in this post or this introduction and in fact welcome any opportunity to correct or clarify the record if appropriate.  I defer, instead, to the Freedom Principle along with a good-faith belief that the narratives published here are materially correct.  I have copy-edited the introduction and Carl’s magnum opus, but very lightly; readers familiar with this blog will see that both guest contributors here are speaking in their own voices.

Cue music, please — first, Benjamin:

After seven years of agonizing litigation, this forum shall allow us to present the over-reaching conducted by one of the world’s largest food companies, foreign owned, and the havoc that they can wreak on a family owned American business, what the results are, and how it affects individual family members who toil at manual labor.

His name is Carl.  He owns and operates a food manufacturing company in Warren, Ohio. He makes a great “pocket sandwich,” the term mandated by the USDA Food Safety and Inspection Service, that has found its way into schools throughout the midwest.

Not everyone thinks that he makes an outstanding product. According to a claim by Nestlé Prepared Foods, Hand Held Products’ division in Colorado, he made an inferior product! At the onset of the attack he was quite surprised at that published statement, because in fact he used to use a lot of Nestlé products in his (he doesn’t use any more). It’s a ridiculous scenario, so you will have to use your own best judgment about the quality issue.

The whole purpose of the “quality” claim, of course, was to suggest that Carl’s use of a trademark claimed by Nestlé was harming its reputation.  Yet just recently one of Nestlé’s Hot Pockets employees was arrested — for war crimes in Bosnia. Inferior products? Higher standards?

Most importantly for purposes of this forum, Nestlé’s  also claims to have exclusive right to the word POCKET in a trademark. Left un-addressed, the consuming public may have to quit calling those extra pieces of fabric on clothes “pockets,” or Nestlé’s may accuse them of infringement, too!

Regardless of these claims, Carl, his family and his company are still supposed to call their food products “pocket sandwiches” by the USDA FSIS definition, and by the former definition in the USPTO’s “Trademark ID Manual.” Today he can.

Here, now, Carl’s story in his own words.  You may want to stick something in the microwave — it’s a long one!

I owe this essay to everyone who believed in creating a dream, and helped build his or her own company into the company we almost were. The following is truthful and factual, which makes it hard to dispute unless, alas, you possess, and are willing to spend, untold amounts of good money to destroy dreams and hard labor, credit, business, integrity and family, such as Nestlé’s did to me and my family.

Prior to July of 2003, V&V Enterprises, Inc., did business as Mauro Brand Products and been marketing and selling “pocket sandwiches” since coming under inspection by the USDA in 1991. Before coming under Federal Inspection with the USDA, we had marketed and sold our products as “pizza turnovers” since 1981. It was quite a traumatic change at that point, because the USDA did not have a category in which to classify our product. Their category was “Multi-Component Products”, and “Pocket Sandwiches” came under that category. We adjusted our customers to the name changes with quite a bit of explanation, but because we made such a well-accepted product, our customer base soon made the adjustment acceptable. We had slowly evolved into a food company which had enjoyed distribution of its’ Pocket Sandwiches in school food service from New York City to Los Angeles. Our years of financial struggle were over. Our commitment to children and to the disabled Americans, which we employed, and still do, was reaching the highest levels of fruition. Our commitment to those less fortunate was driving our goals. St. Jude Children’s Research Hospital became our ‘friend in need’, along with the ‘Make a Wish’ Foundation. Above and beyond our monetary contributions, Micaela, my wife of 33 years, formed a ‘club’ for making rosaries, and taking any and all donations to our beloved charities, so that more people would feel compelled to help those poor children with nowhere else to turn.

We started our company in a back room at Sorrento’s on Parkman Rd. in Warren, Ohio. Keeping both businesses under one roof was proving to be very difficult so we built a new facility right up the street so the business could grow and flourish. After a few years, our small building was virtually bursting at the seams and we needed to expand the ‘brick and mortar’ to allow for continued growth. With a ‘lease to own’ agreement, we completely renovated a former bowling alley to become a state of the art, USDA inspected food facility, which was eight times our former size, with extra acreage for future expansion. With bona fide contracts in hand, we ordered new manufacturing lines, which would easily triple our daily, single shift output. Everybody was our friend.

With multiple years of successive double-digit growth and profits, our internal team, and acquired minority business associates, felt that the timing was right for a Reverse Merger into an existing Shell; a ‘public offering’ of the company. Lawyers and professionals were hired to properly formulate a new company, which would embody all that we were and all that we could be, and the process was set into motion. As we were reaching the finish line of dreams that can come true, we received a simple letter from Nestle USA; Nestle Prepared Foods Group; Hand Held Products Division, Englewood, Colorado.

In the side pocket

They demanded that we cease and desist our current path or they would sue for Trademark Infringement, Deceptive Trade Practices and Unfair Competition, among other things. We had been making ‘pizza pockets’ since 1991, showing them at trade shows, sometimes next to the ‘Hot Pockets’ brand with no exchange of concerns, but it was now time to get rid of their annoyance.  They had told us that they had monitored us since 1998. We made a great product, which was in growing demand, and they needed to maintain market share. It was stated by Nestlé’s that we could not afford to defend ourselves and our only option would be to change our name and what we called our product.

This multi billion-dollar company was attacking our less than 1.4 million dollar company.  We were making an impact. Making a good product, hard work and dedication had gotten the attention of the world’s largest food company. We thought it was funny. Still being somewhat naive, we didn’t notice that no one else was laughing. Read More…

Not a good e-discovery strategy

Originally posted 2007-02-08 16:29:54. Republished by Blog Post Promoter

Lavi Soloway writes (hat tip to Above the Law) regarding the extremely un-white-shoe discrimination litigation in New York County between former Sullivan & Cromwell associate Aaron Charney and the law firm, including this astonishing bit:

Last Wednesday January 31 there was a secret settlement meeting at which Charney was offered an undisclosed sum in return for which he promised, among other things, to destroy the hard drive on his personal, home computer. The destruction of that hard drive moved to the center of the debate. Aaron Charney has been ordered to submit an affidavit to the court regarding the hard drive and the status of documents that were allegedly in his possession.

Judge Fried also ordered Aaron Charney to produce his personal, home hard drive at 9:30 a.m tomorrow morning, if, in fact, is has not been destroyed. Fried was particularly concerned that Charney seems to have destroyed the hard drive (which would presumably have contained emails he sent to him self from his Sullivan and Cromwell account with client documents and other firm related documents attached) AFTER being ordered by Judge Ramos at an earlier hearing not to do so. It appeared that Charney destroyed the hard drive becuase S&C asked him to do so as a condition of settlement.

This would be astonishing, indeed. You don’t even need the new, improved and annoying e-discovery rules in the federal courts, nor do you need to be a litigator, to know what a bad, bad idea that was.

Both parties may have a lot of explaining to do. Sweeter it does not get!

UPDATE: S&C promises plenty of explaining. They’ve got your explaining right here. ($5 Million?!)

I have a list

Anyone who is interested in trademark law and is reading this should do what I do:  Read blogs by pure trademark lawyers* such as Marty Schwimmer’s Trademark Blog and John Welch’s TTABlog® (and some law professor blogs, too, but besides Eric Goldman they mainly never link to lawyers and I guess today I’m in the mood to return the favor).  But also they should subscribe to the International Trademark Association “list,” “TMtopics.”

Essex County Hall of Records

Everyone who’s anyone at least looks at this email list, and many of the everyones who are real trademark law whizzes generously share their expertise, which is sometimes dizzying in its profundity.  It’s okay if you don’t read the INTA list every day, too — it can be a bit much sometimes, especially for civilians — but your trademark learning will grow and grow the more you do.

Here, for example, is a great pickup in connection with an issue that cropped up a years ago when the Second Circuit ruled, in International Star Class Yacht Racing v. Tommy Hilfiger U.S.A., that a defendant that searches federal applications and registrations before choosing a trademark — which is easier than ever these days due to the online TESS system —  and then turns out to have infringed on someone else’s common law mark is not an “innocent infringer.”  To the contrary, ruled the court, such a defendant has acted in bad faith (and had to suffer an enhanced damages award) by failing to search common law uses, which is done by one or two fairly pricey trademark search services.

That made quite an impression on trademark lawyers, if you weren’t around then.

So the question that came up this week on the list was: “Is it malpractice to tell a client it can lawfully use a mark when you only conduct a search via TESS?”  Among the useful comments I most appreciated and learned from this one by crack trademark attorney Dan Ballard (@ballard_ip):

I think it is.

The following link is to a compilation of Second Circuit law on the intersection of trademark searching and bad faith infringement. See http://j.mp/6J6Sq3 .

After Hilfiger, the Second Circuit decided Streetwise Maps, Savin, and Star Industries – all of which walk back the apparent trademark search requirement created by Hilfiger.  These latter cases hold that a trademark owner cannot prove bad faith infringement solely by noting the fact that the infringer did not conduct a trademark search — either properly or at all.  Flipping that rule means that the failure to conduct a search is not, by itself, conclusive evidence of bad faith infringement.

But back to the original question: is it malpractice to tell a client it can lawfully use a mark when you only conduct a search via TESS? I think it is.

I do, too.  Because it is.  And adding a Google search helps — but not much.  Failure to conduct a search (a real search) isn’t conclusive evidence of bad faith, but it’s still evidence.  And it’s still … failure to conduct a search.

Trademark-wise, that’s not where you want to be.

* Yes, the “pure” modifies “trademark lawyer,” not “lawyer.”

Giving his all, almost

Jeffrey A. Conciatori

Jeffrey Conciatori

I understand getting hot under the collar while defending meritless trademark claims, but this is a bit much:

Trademark infringement trials are not usually emotional affairs. But Quinn Emanuel Urquhart & Sullivan partner Michael Carlinsky told us there were some poignant moments for him during a two-week bench trial this past winter when he defended the real estate developer Caruso Affiliates against trademark infringement claims by Americana Manhasset, a Long Island shopping center.  Those moments came during video depositions when he could hear the voice of his partner Jeffrey Conciatori. Before Carlinksy stepped in to try the case, Conciatori was Caruso’s lead counsel. But last July, on the day the trial was originally scheduled to begin, Conciatori suffered a stroke and collapsed in Brooklyn [sic – it’s actually Central Islip, New York — RDC] federal district court.

The Quinn Emanuel team went on to win the case, the lede-burying article on Law.com says.  Oh, and dig through the piece aggressively enough and you’ll learn that, uh, yeah, human being Jeffrey Conciatori is currently recovering.

And what exactly was this lawyer-felling claim, by the way?

The Americana Manhasset, a very pricey outdoor mall, had challenged Caruso’s use of “Americana” at its Glendale, Calif[ornia], residential and shopping area, The Americana at Brand. Americana Manhasset asserted seven claims against Caruso, including trademark infringement, unfair competition, and unjust enrichment.  Brooklyn [sic] federal district court judge Leonard Wexler didn’t find sufficient evidence of consumer confusion between the two marks [and ruled that Caruso is entitled to judgment on all of Americana Manhasset’s claims. He also granted one of Caruso’s counterclaims, canceling an Americana Manhasset trademark [registration].*

Not surprising.  Not that I know a thing about the case, but unlike some federal judges in this town, Judge Wexler is, if not a trademark infringement skeptic (see here and here), not exactly a Big IP — or, as it turns out, big retail — pushover.  And not that the defendant here was a Mom and Pop operation — they had no fewer than four Quinn Emanuel lawyers working this two-week trial.

Okay, I have to ask:  This victory was more cost effective than changing the name of the darn shopping mall? Obviously there was an immense amount of pretrial work; the case is over two and half years old and, according to PACER, weighed in at 205 docket entries by the time its number was retired this week.  Motion to dismiss, motion for sanctions, motion for discovery, motion to strike, motion for sanctions — a guy could get motion sickness just reading the docket sheet!  Then four premium-priced lawyers over two weeks, and plaintiff’s counsel has promised an appeal…  All this to fight over trademark rights, not in Barbie or something where money is no object (being a “property” with a huge intellectual property equity component) but over AMERICANA — one pretty uninspiring name for… a mall!

Well, that’s why some of us make the big bucks, I guess:  Some clients just seem to want to give it to them.  Why those guys end up pulling Judge Wexler while I merit decidedly different luck in that charming courthouse — well, that’s an even more cosmic question.

In any event, LIKELIHOOD OF CONFUSION® wishes a full recovery to Jeff Conciatori.

*If you choose to read the original real-journalism Law.com article at the link, you’ll find the sentences set off here, but not in this order.  Besides burying the lede, juggling the chronology, downplaying what appears from the docket to be the very significant role at trial of Quinn Emanuel’s Deborah Brown, using an abbreviation for “California” in narrative text and, contrary to fact, transferring both Judge Wexler and Conciatori’s stroke to Brooklyn (it says Central Islip right on the opinion and on every other piece of paper with an address on it I could find on PACER) I couldn’t make any use of the words in the order this article put them in.