LIKELIHOOD OF CONFUSION®

The TTAB recently ruled, based on internal reasoning that is entirely justifiable, that if you can’t afford to litigate — as far as is necessary — against a larger, richer adversary, it probably doesn’t pay to litigate at all.  The outcome, is, however, maybe a little troubling — but, on the other other hand, not so much, both on its own terms and because it seems to me to correct a substantive wrong in the first place.  It’s like this:

As reported by John “Trademark Elite 1000″ Welch in this TTABlog post, there was — let’s put aside the underlying substantive details for now, to add to the simulated drama I am attempting to create here — a certain TTAB decision, refusing an opposition by the opposer and allowing registration, that had been appealed, see?  The opposer, ever oppositional, appealed that ruling to the U.S. Court of Appeals for the Federal Circuit.

[W]hile the appeal was pending, applicant AFP unilaterally withdrew its application to register. The CAFC then dismissed the appeal as moot and remanded the case to “allow the Board to consider a motion to vacate its decision in the first instance, in accordance with United States Bancorp Mortgage Company v. Bonner Mall Partnership, 513 U.S. 18, 29 (1994), and for any further proceedings deemed appropriate by the Board.” The Board concluded that U.S. Bancorp mandated that the Board’s decision be vacated. . .

AFP argued (without evidentiary support) that it was “forced” to withdraw its application due to the cost of litigation, but the Board found that to be irrelevant. AFP withdrew its application without [Opposer's] permission, thereby mooting the appeal. Under those circumstances, U.S. Bancorp mandated that the Board’s decision be vacated.

Indeed, to decide otherwise would be manifestly unfair because applicant’s unilateral abandonment of the subject application has frustrated opposer’s statutory right to seek review of a decision it believes to be incorrect. In view thereof, the Board’s decision is vacated.

I hear it.  And this last passage quoted by John really gets the point across.  In for a penny, in for a pound, when it comes to litigation whose outcome could, one way or another, could have precedential value to one of the parties involved — which is often going to be the case in an opposition proceeding.  Here the now-vacated decision would surely have, absent the vacatur (not “vacation”!), cast a shadow over any future prosecution of similar claims in opposition by the same mark holder.  If there is, and indeed there is, a right to review of such a decision, you can’t just take the ball and go home when you’re winning.

Well and good.  But, you know me: Read More…

He’s already the most sincere, if not the swiftest, trademark counterfeiting defendant* of 2009, and though it’s only early February it may be hard to top Poynette, Wisconsin’s Vincent Konicek for a certain kind of earnestness and, well, um, some other sort of special quality that you just can’t … replicate:

Whatever.

Rolex … filed a federal lawsuit in Madison Wednesday against Vincent Konicek, accusing him of infringing on the company’s trademarks by selling knockoff Rolexes over the Internet. . . .

It also accused Konicek of violating the federal “cybersquatting” law by using the Rolex name in his Web site, “toprolexreplica.com,” in order to profit from the company’s name.

Konicek said Wednesday that he started selling the fake Rolexes after a trip to China, where they were being sold on the street for $10. Konicek sells his own Chinese-made Rolexes for $99.

The lawsuit states that Rolex found out about the site in October and wrote to Konicek. He faxed back a letter five days later, saying that when they finish “suing all of the following merchants listed on Google search pages, call me and let me know you are going after me next.”

He attached two pages of a Google search that used the terms “Rolex replica.” Rolex concluded that Konicek is “fully aware” that what he is doing is illegal and willful, the lawsuit states.

But Konicek didn’t sound all that certain.

“I didn’t know I was going to run into copyright infringement,” he said. “I guess I’ll have to talk to an attorney and see what I can do.

Well, don’t be hasty or anything, Vincent.  Copyright, trademark, replica, counterfeit, legal, schmegal, whatever.  Talk to an attorney when you have a chance, for sure.  But certainly don’t hesitate to talk to any reporters first.

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*Disclosure: Plaintiff here is a some-time LOC client, though not so much in Wisconsin. Lately.