Where to start, where to start…
At the beginning, I guess. Though not in chronological order.
LIKELY2CONFUSE00001: I wrote a post on the subject of the genericization of the term “Bates Stamp” in June of 2012. It took hours and hours of research and analysis, and when it was done I was so proud of myself that I published it twice, the second time declaring, in my characteristic modesty, that it was “the best post of all of 2012, and maybe ever, on LIKELIHOOD OF CONFUSION® or any other blog.”
LIKELY2CONFUSE00002: Because I liked this post so much, sometimes I go back to read it again. Yes, I do that.
LIKELY2CONFUSE00003: Usually I would do this by searching for the key word “Bates” on the blog search box itself. One time, however, confident of the SEO power of the post, I once Googled “Bates Stamp trademark” to get to it.
LIKELY2CONFUSE00004: Doing the Google search for my keywords resulted in a considerable surprise, however, because right there on the first page was this:
Ouch. October 13, 2010 — almost two years before mine. And returning above MY post on Google even! Uh oh.
LIKELY2CONFUSE00005: I clicked through to the post by Christina Frangiosa… and, to my horror, it was good — only shorter than mine. In other words, really good.
LIKELY2CONFUSE00007: I have now added the following update to my original post:
HOMER NODS: Maybe Google got better. Maybe I missed it the first time, though I am hard-pressed to see how. But this 2012 post, in its essentials, had already been written in 2010 by Christina D. Frangiosa in 2010, under the title, “Have we Lawyers Genericized ‘Bates’ Numbers?” on the Privacy and IP Law Blog. Christina’s conclusions are exactly the same as mine:
The Bates Manufacturing Company also applied for – and was issued – registration of its trademark BATES (stylized) claiming a date of first use since 1891 for “numbering machines” in Class 09 (Reg. No. 158,174, renewed in 2002) and in Class 07 (Reg. No. 269,975, renewed in 2010). . . . The company also owned trademark registrations in BATES for other products like ink pads and stapling supplies.
However, it appears that these trademarks may be of limited value because in undertaking the research for this article, I found many sites marketing software versions of “bates numbering” programs (e.g., http://www.bates-stamp.com/), or offering to sell their services to manage the “bates numbering” process for litigants (e.g., http://lsilegal.com/web/Solutions/TraditionalSvcs.aspx). It appears that the mark “Bates” as applied to automatic numbering systems may have become generic for a system of automatically applying sequential numbers to documents.
In this case, the trademark owner consistently applied its graphic label (which seems to be branded onto a metal plate) to the stampers themselves, by affixing it mechanically. . . . But, it apparently did not protect the mark (or the mark has lost its trademark value) in connection with sequential numbering systems or services to apply these types of numbers to documents, either in hard-copy or electronic form.
The lesson to be drawn from this – when you create a unique name for a product (or service) and begin to use it in commerce in connection with that product (or service), plan ahead for the possibility that the technology in which you began using the mark will evolve into something new. At the very least, recognize that as your industry matures, your trademarks may change, even if the products or services themselves remain the same as they were when they were first introduced. While it may be wonderful when your brand name becomes a household (or lawfirm-wide) word, mark owners need to police the use of their marks to keep the their value from being undermined.
LIKELY2CONFUSE00008: Christina, whom I have never had the pleasure to meet, is entitled to congratulations, not only for scooping me, but for three actually meaningful reasons:
- In September of 2016, she announced that she had joined the law firm of Eckert Seamans, and yeah, it checks out;
- In November of 2016, she completed her cautious and deliberative, but ultimately successful, move off Blogger to WordPress; and
- Her blog, the Privacy and IP Law Blog, has been cooking since April 2009! Which, when you consider that blogging is hard, is molto impressive, especially for someone with a normal career.
LIKELY2CONFUSE00009: I’ve waited… a while to get around to doing this post.
LIKELY2CONFUSE00010: Stamp it “resolved”!