John Baden of Kenyon brought this interesting attorney advertising case to the attention of the INTA list yesterday: 

“[A] recent decision (published in BNA PCTJ 66,48(May 9, 2003)), held that “It is misleading and self-laudatory for an Ohio law firm to provide prospective clients or other firms with statistics about the number of intellectual property matters won, lost, and settled by the firm, the Ohio Supreme Court’s ethics panel advised April 11 (Ohio Supreme Court Board of  Commissioners on Grievances and Discipline, Op. 2003-2, 4/11/03).”

Apparently, the inquiring law firm wanted to distribute statistics about the number of intellectual property matters won, lost, and settled by the firm,  including all results, both unfavorable and favorable, ostensibly as “historical data, not predictors of the future outcome of any particular case.” “The board observed that the Ohio Code of Professional Responsibility forbids a lawyer to use any form of public communication that contains any “false, fraudulent, misleading, deceptive, self-laudatory, or unfair statement,” or that contains any “unverifiable” claim. Although the Ohio ethics code does not ban the use of statistics, they must be verifiable and their use must not be misleading, self-laudatory, or unfair, the board said.”

“The board concluded that it is likewise improper under the advertising rules to list statistics about the number of wins, losses, and settlements in intellectual property matters. Such statistics imply that wins and losses depend solely upon the firm’s skill and expertise rather than upon the merits, the board found. It also said that the firm’s proposed use of the statistics would be self-laudatory and would create unjustified expectations that the firm is able to control case outcomes.”

Still, like a pitcher’s win/loss record, taken together with his ERA and his batting average against, there will be some correlation to skill.  However, what might not be clear to the client, is that the perfect record would be no wins, no losses, all settled.

Photo of Greg Maddux, a pitcher with a good winning record, from Starwave.com.

Unpublished Fourth Circuit decision.  Plaintiff registered AUDITRON in stylized form thirty years ago.  Record indicated that he hadn’t used that stylized form for 15 years.  Defendant registered AUDITRON for hi-fi speakers, and then moved into health practice management software.  Defendant registered auditron.com.  Plaintiff brings infringement (section 32 but not 43(a) (infringement of an unregistered mark)) and cyber-squatting causes.  The cybersquatting action was dismissed as defendant clearly registered the name in good faith, having used it for years.  The infringement cause was dismissed as plaintiff had abandoned the stylized form.  An allegation of infringement under 43(a) could have led to an interesting discussion in view of the unusual jump by defendant from speakers to management software.

Practice point for pro se trademark plaintiffs:  Always bring 43(a) because if for no other reason, your registration could get cancelled.

Another practice point: plaintiff’s loss of his registered rights illustrates why someone’s first trademark application should be for a word mark or ‘typewriter letters’ as some call it.  A company is much more likely to change its stylization over time than its housemark.

Sloane v. Auditron Electronic , 02-1787 (Fourth Circuit, June 5, 2003) (unpublished).

 

Via ICBTollFree: AT&T is suing Sprint, One Call and ASC for what it calls a ‘fat-finger dialing scheme’ whereby they obtained close versions of the toll free number 1 800 CALL ATT.

MCI reportedly owns 1 800 OPERATER (as opposed to ATT’s 1-800-OPERATOR).

ATT reportedly owns 1 800 CALL MCI.

The FCC on fat-finger dialing here.

Global800 law libary, including a link to the 1-800-H0LIDAY decision here.

The domain name Fatfinger.com is taken by a Cayman Island company.

 

Via Politech and info-commons.org, a demand letter from the MPAA to the owner of a website named RATEDNC-17.COM, which appears to distribute ‘themes’ or ‘styles’ for Linux.  The MPAA Rating System consists of certification marks.  The criteria for MPAA’s NC-17 mark is:

. . . IN THE OPINION OF APPLICANT’S RATING OR APPEALS BOARDS, MOST AMERICAN PARENTS WILL CONSIDER THE MOTION PICTURE INAPPROPRIATE FOR VIEWING BY ANYONE UNDER THE AGE OF 18, BY REASON OF ITS DEPICTION OR TREATMENT OF VIOLENCE OR SEX OR ABERRATIONAL BEHAVIOR OR DRUG ABUSE, OR A COMBINATION OF THESE OR OTHER ELEMENTS.

In contrast, the criteria for the MPAA’s “Rated R” mark is:

. . . IN THE OPINION OF APPLICANT’S RATING BOARD, IS AN ADULT FILM IN SOME OF ITS ASPECTS AND TREATMENT SO FAR AS LANGUAGE, VIOLENCE, NUDITY AND SENSUALITY ARE CONCERNED, AND THAT BECAUSE OF SUCH ELEMENTS NO NOE UNDER THE AGE OF 17 SHOULD BE ADMITTED UNLESS ACCOMPANIED BY A PARENT OR GUARDIAN.

The International Trademark Metasearch (free registration required) suggests that MPAA has extended its rights to Europe., where the ratednc-17.com website is apparently maintained.

There appear to be no valid U.S. registrations for the term RATED X or X RATED.

The MPAA ratings database is here.

An article on how the NC-17 rating evolved out of the X rating is here.