Undeservedly short answer to the excellent questions asked by Ernie the Attorney here:

Denise does not likely have nationwide common law trademark rights in the term BLAWG even though she coined it because, as far as I know, she does not use it as a trademark.  Specifically, she uses BLAWG to describe the class of blogs known as law blogs, and does not use it to identify a source of goods or services.

She does appear to have nationwide common law rights in the mark BAG AND BAGGAGE for the provision of legal information.  She could also consider coming out with a line of BAG AND BAGGAGE items similar to those she discusses here.

One wonders what would happen if another attorney name Ernie was to advertise himself as ERNIE THE ATTORNEY. One may use one’s own name to identify themself (as our readers know) unless such use causes confusion.  I would happily sign an affidavit that to me, the mark designates no one other than blogdom’s Ernie (and his place on the Userland Top 100 would be good additonal evidence of h sucsecondary meaning).

Inherently registrable blawg names include Bag and Baggage, InstaPundit, How Appealing, Copyfight, Excited Utterances (one of the great blawg names), and LawMeme, as they are either coined, arbitrary or suggestive of law blogs.

Attorneys Suck describes one quality of the provision of legal information and would require secondary meaning to be protectable as a trademark.

As for Trademark Blog, it’s a good thing I own the domain name.

The judge in the LINDOWS csae has dismissed Lindows.com’s motion for summary judgment, ruling that it is a disputed factual issue as to whether WINDOWS was the generic term for “graphical computer operating environment” software.  Text of order here.  The case now goes to trial in April.

A key holding in Part VI of the Order is that the court declined to determine whether the relevant date for determining genericness should be 1983, when MS adopted whether the mark, or the present or perhaps 2001 when Lindows adopted the mark.  The facts were disputed as to the status of the term in 1983, and that was sufficient to dismiss the motion.

The Lanham Act indicates that a generic mark never becomes protectable – that would suggest that the relevant inquiry should be whether the mark EVER became generic, and if it did, it can never be “reclaimed.”  So if WINDOWS was generic the day before MS adopted the mark, that’s the end of it – no trademark.

On the other hand, this may be an odd case.  For one thing, I would submit that WINDOWS is absolutely not a generic term for graphical operating environment software today.  No one would go into a store and ask for windows software, not expecting to be given an MS product.  Of course. it’s the actions of MS which create that reality, and that cuts both ways.

On the third hand, consider the equities of the case.  This is not a situation in, for example, 1984, where a company like Quarterdeck (remember them?), is using the term generically and MS is asserting rights.  This is a situation where a well-funded company adopted LINDOWS in 2001 knowing that WINDOWS was functioning in the marketplace (if not in the Lanham Act), as one of the most valuable trademarks in the world.  This may be an argument to give the situation in 2001 some weight.

As an aside, the decision, and supporting material Lindows has supplied on its website provides a stroll down memory lane for we geezers who used personal computers in the early 80’s (not that I long for the KayPro I used in law school).

 When I met InstaPundit at a conference in November, I shamefully admitted to him that I didn’t know what ‘fisking’ meant.  He patiently explained that it is a line-by-line analysis of a piece. This article appeared in today’s NY Times.  You will have to forgive my knee-jerk reaction to any article which contains the quote “Trademark law is a problem,” and then supports that assertion with the author’s free association to trademark disputes which involved celebrities or big companies.  OK, here goes.  Non-indented text mine, blue indented text their’s.

“AT&T Ad Trips Over a Trademark

By NAT IVES

Freedom of expression, it turns out, may not be for everyone.”

OK, you’ve got my attention.

“Kembrew McLeod, assistant professor of communications studies at the University of Iowa, believes that “freedom of expression” — or at least the phrase — belongs to him, because he registered it as a trademark in 1998. And now that AT&T is using the phrase in some print ads, he wants the company to stop.”

A David and Goliath story, good, go on. 

“Yesterday, Mr. McLeod sent AT&T a “cease and desist” letter, asserting that consumers might infer a link between the company and his anti-corporate publication, “Freedom of Expression.”

I checked and Mr. McLeod’s registration covers creative writing booklets, a far cry from telecommunication services.  Maybe he has a magazine on the side.  There is an illustration of the AT&T ad in the Times and FREEDOM OF EXPRESSION is used as copy in an ad, arguably not trademark use.  There is a fair use defense in this type of fact pattern which AT&T is or is not entitled to.

 The bigger idea behind his legal action, he said, is to object to corporate power over words, speech and even ideas.

But his demand letter is the assertion of such power.  Did he put a little ‘just kidding’ emoticon at the end of his letter?  And he and the author of the article should know) that trademark law already embodies the fix he wants, namely the fair use defense. 

“I do want to register my genuine protest that a big company that really doesn’t represent freedom of expression is trying to appropriate this phrase,” he said.

But AT&T isn’t claiming exclusivity in the phrase.  Why symbolically protest a claim which isn’t being made?

AT&T has not received the letter and will not comment before it does, said Jeff Roberts, a company spokesman”

Must have been sent regular mail.  And if AT&T doesn’t ever reply to this letter, will the professor file an ironic lawsuit?  Because Federal Rule 11 prohibits ‘just kidding’ suits.

 “The notion of intellectual property became tabloid fodder in 1993 when NBC lawyers tried to prevent David Letterman from taking skits like Stupid Human Tricks from “Late Night” to his new CBS show.

Wait, I’m confused.  We were talking about some kind of public interest thing.  David Letterman’s IP dispute with NBC was a common commercial dispute (albeit one which involved David Letterman).  Is the point that tabloids began covering IP issues in 1993?  So this is a tabloid trend?   

Then the game show hostess Vanna White successfully sued Samsung Electronics for making a commercial with a robot in her likeness without her consent.”

I’m still confused.  Using a cartoon likeness of Vanna White without her authorization in a commercial advertisement is or is not a violation of her “personality rights,” a concept dating back a hundred years.  What has that to do with freedom of expression?

 “Dust-ups proliferated . . .

Says who?

and by last October, the premise was pervasive enough to drive a plotline on an episode of “Curb Your Enthusiasm” on HBO in which the comedian Richard Lewis tried desperately to prove he coined the all-purpose pejorative, “blank from hell” (as in “nanny from hell”).”

Funny episode.  But I don’t think the premise was necessarily IP, I think the premise was the vanity of authorship.  Richard Lewis didn’t want money, he wanted to be credited in Bartlett’s.

You know, the season finale with the chef with Tourette’s, that might be the funniest episode ever.

 “Trademark law really wasn’t that big a problem several years ago,” said Lee Tien, senior staff lawyer at the Electronic Frontier Foundation, a technology-oriented civil liberties group in San Francisco.

Oh-oh.

Traditionally, the litmus test was customer confusion: if a potential trademark infringement confused customers, it was probably illegal, he said.

OK.

But the courts increasingly have ruled that diluting a brand — by using a similar name even in an entirely different business — is against the law, Mr. Tien said.

This wasn’t a judicial trend, the law changed.  Federal law was amended in 1995 to make nationwide a concept which had previously been the law in many states – that dilution of a trademark was actionable.  But now at least this article has a theory with a testable premise in line with the opening paragraph.  The Federal Dilution statute may have unintended impact on civil liberties.

“And the spreading reach of the Internet has brought every McDonald’s dry cleaners and McDonald’s car wash into potential conflict with the McDonald’s Corporation.”

Well, the statute’s not really retroactive, so not every McDonald’s dry cleaners.  But wait, are we talking about the effect of the dilution statute on civil liberties, or on choosing business names?  Because we could have that premise also: the new federal dilution statute creates uncertainty in naming businesses.  By the way, if you substitute KODAK for McDONALDS in the sentence above, dilution sounds like a plausible concept.

One result is a lawsuit from Victoria’s Secret in Columbus, Ohio, part of Limited Brands, accusing a store in Elizabethtown, Ky., originally named Victor’s Secret, of dilution. Although the store was renamed twice — Victor’s Little Secret and then Cathy’s Little Secret — the case still landed before the United States Supreme Court in November.

OK, we’re sticking with the small business angle.  But apparently the Supreme Court is going to help out on the uncertainty problem.

“No one would think for a moment that Victoria’s Secret has anything to do with Victor’s Little Secret,” said Jonathan Band, a partner at the Washington office of Morrison & Foerster. “But he’s clearly trying to trade on the name.”

The reader would be more apt to agree with this statement if the article had indicated that VICTOR’S SECRET was a lingerie and sex toy shop.

The court now has to decide how much damage, if any, Victoria’s Secret has been done, he said.

Close enough.  If you read the transcript of the oral aruments, the Supreme Court isn’t sure what’s being asked of it either.

A ruling is expected this summer.

“While such contests often pit large trademark holders against mom-and-pop companies, it is not always that way. Behemoths are subject to scrutiny as well, including Microsoft, which is suddenly defending its trademark on the word “Windows” in court.

The article just free-associated and introduced Microsoft.  We now bring our MS baggage with us as we evaluate its case.

Microsoft began the legal dispute when it filed suit against Lindows .com Inc., in December 2001, asserting that Lindows, a maker of Linux-based software, was freeloading on the Windows name.

So why did the owner of Lindows choose LINDOWS?

Microsoft said it had invested $1.2 billion in marketing Windows, which it had successfully registered as a trademark. Lindows .com later sued to strip Microsoft of its trademark, arguing in part that “windows” was too generic to trademark. The case is pending.”

The focus of the article has gone from “freedom of expression” to “celebrity IP disputes” to “effect of dilution law on civil liberties” to “effect of dilution law on small businesses choosing names” to “trademark stories the Times have covered in the past month which involve Microsoft.”

 “Daniel R. Harris, partner at the law firm of Clifford Chance, which is representing Lindows.com, said Microsoft wanted to reserve a common word exclusively for its own marketing.

Given that trademark law allows registration of dictionary words, and has for a long time, this is both legal and common.

“They’re trying to use their monopoly power to monopolize a word out of the English language,” he said.”

Populist arguments from the world’s largest law firm.  APPLE and MACINTOSH are words out of the English language.  Apple can plausibly challenge the use of LAPPLE or LACINTOSH for linux-capable computers.  Is WINDOWS for GUI software against LINDOWS for GUI software different?  The real issue in the LINDOWS case was stated previously: was WINDOWS a generic term for windowing software when Microsoft took that word.  The prohibition against generic and descriptive words protects other traders who may wish to use that term in connection with their own goods.  Incidentally, I’m aware that I an arguing with Lindows’ lawyer now, not the article.

“Not surprisingly, Microsoft takes a different position. “Our viewpoint is a fairly simple one,” said Jon Murchinson, a company spokesman, “that Lindows not free-ride on the investments that we’ve made in building Windows into one of the most recognizable brands in the world in the last 20 years.””

OK.  Microsoft is either right or wrong. 

 “The stakes seem lower for AT&T.

Right, we were talking about AT&T and freedom of expression a while ago.

The ads using “freedom of expression” ran only in college-oriented newspapers during the third quarter of last year, said Mr. Roberts, the AT&T spokesman.

For Mr. McLeod, however, a confrontation with AT&T could generate welcome publicity, and not only for his belief that private ownership of language can impede the free flow of information.”

Which belief was not supported by a single instance of “private ownership of language” being utilized against public use of information.in this article.

His trademark certificate will be part of an exhibit of art on the fringes of intellectual property, entitled “Illegal Art,” opening in Chicago on Saturday.””

See, everybody has something to sell.    

There is apparently a battle for the control of publicly traded domain name registrar Register.com (ticker symbol RCOM).  RCM Acquisition made an unsolicited offer last week, now Zackfoot Investments has made a higher offer.

Other publicly traded companies in the “brand” sector are Verisign (ticker VRSN), Tucows (TCOW.OB), Information Holdings Inc. (IHI), Melbourne IT (MLB on the Australian Exchange) and NetBenefit (NBT on the London Exchange), if you were thinking of putting together a Naming Mutual Fund or something.

BULLION is a mass of gold or silver. BOUILLON is a clear soup from beef. chicken or other meats.  BOUILLIOUN is a surname of a former president of Boeing and a registered trademark of Bouillioun Aviation Services.  BOUILLABAISEE is a fish chowder. 

Registrant filed for BOULLION.COM.  She testified in this UDRP that she had intended to file for BULLION.COM, and put up a site having something to do with precious metals (which she never did).  Complainant sent a letter asking for the name and registrant offerred to sell it for an exceedingly high amount of money.

Panelist, suspecting typo-squatting, states:

It is difficult to know exactly what was in the mind of Respondent at the moment she registered the domain name, in terms of good or bad faith. However, the fact remains that soon thereafter, she began receiving emails intended for Complainant and did not make any effort to consider changing the domain name. Instead, she chose to attempt to profit from the confusion and sent financial solicitations via email to Complainant’s employees. Knowing of the misspelling of the word for gold bullion (her alleged motive for registering the domain name), she continued with the domain name containing the incorrect spelling.

Two other very relevant facts are determinative of this case:

1) There is no disclaimer whatsoever by Respondent on its website to the effect that it is not affiliated with Complainant, which implies an intention to profit from web traffic confusion with Complainant.

2) The extraordinarily high asking price for the domain name, between U.S. $500,000 – $ 1.37 million, obviously in excess of Respondent’s costs in registering the name, or even of Respondent’s claim to try and recoup its $ 70,000. business investment.

CONCLUSION – Respondent did not change the domain name when she soon became aware of its similarity with Complainant’s mark. Instead, she saw the tactical potential to try and take advantage of the situation.”

Well, that may be, but IMHO, the “reversible error” is the phrase “It is difficult to know exactly what was in the mind of the respondent the moment she registered the name . . .”  It is my understanding that bad faith has to be shown at the time of registration and afterwards, and when the panelist concedes that it is hard to infer such intent, then, even if the panelist suspects cyber-squatting, the case is not suitable for the expedited, limited-record UDRP proceeding.  While respondent’s post-registration behavior may be repugnant or greedy or bad, it’s not cybersquatting if there was no some type of bad faith at the moment of registration.

For a cases where panelists do suspect that the respondent is not so decent, but the record isn’t sufficient to transfer the name, see the RAIDERETTES and the FOREIGNER decisions.

p.s. Thanks to the Intellect Law Group for bringing this case to my attention.

LEGO bricks, with their studs with 360 degrees of clutching power, lie in the interstices of several forms of intellectual property: patent, copyright and trade dress.  Its success forces Lego to fight on many fronts.  It has now prevailed on a copyright theory in China, against a company which copied its bricks.  Interestingly, the remedies included seizure of the machinery to manufacture the duplicate bricks, and the publication of a written apology.  This is significant in China’s attempts to “normalize” its treatment of IP rights (but see  . . . )

In this question to a small business advisor from entrepreneur.com, we disagree with the bit about hiring a patent lawyer to file a trademark application.  We also disagree with the bit about filing  trademark applications oneself.  Previous discussion on who should file here.

My theory is that the common confusion between patents and trademarks is caused by the fact that there is one government agency, namely the Patent and Trademark Office, to handle these two separate rights.